Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT REGISTRANT’S TRADEMARK REGISTRATION

 POST REGISTRATION OFFICE ACTION

ISSUE/MAILING DATE: 3/16/2011

Registration Number  2475924

The Combined Section 8 Affidavit & Section 9 Renewal Application was received on March 7, 2011.  The Section 9 portion of the combined filing can be granted.  However, the Section 8 portion is not accepted for the reason(s) set forth below.

Specimen

The owner of the registration provided a specimen with its Section 8 Affidavit; however, although the specimen is identified as a point-of-sale display associated with the goods, it appears to be mere advertising material and is not accompanied by evidence of point-of-sale presentation.  See In re Ancha Elecs., Inc., 1 USPQ2d 1318, 1319-20 (TTAB 1986); TMEP §904.03(g).

Material that functions merely to tell prospective purchasers about the goods, or to promote the sale of the goods, is not acceptable to show trademark use.  TMEP §904.04(b).  Invoices, business cards, announcements, price lists, listings in trade directories, order forms, bills of lading, leaflets, brochures, publicity and press releases, advertising circulars and other printed advertising material, while normally acceptable for showing use in connection with services, generally are not acceptable specimens for showing trademark use in connection with goods.  See In re MediaShare Corp., 43 USPQ2d 1304, 1307 (TTAB 1997); In re Schiapparelli Searle, 26 USPQ2d 1520, 1522 (TTAB 1993); TMEP §904.04(b), (c).   However, displays associated with the goods that comprise point-of-sale material such as banners, posters, shelf-talkers, window displays, menus, or similar devices are acceptable specimens to show trademark use.  See In re Bright of Am., Inc., 205 USPQ 63, 71 (TTAB 1979); TMEP §904.03(g).

Therefore, the owner must satisfy one of the following:

(1) Submit evidence of a point-of-sale display, such as (a) a photograph, with the mark clearly discernible, showing the specimen associated with the goods in a point-of-sale display; or (b) a statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20, explaining how the specimen is used in a display associated with the goods.  See 37 C.F.R. §2.61(b); In re Drilco Indus., Inc., 15 USPQ2d 1671, 1672 (TTAB 1990); In re Ancha Elecs., 1 USPQ2d at 1319-20; TMEP §904.03(g); or

(2)  Submit a substitute specimen showing current use of the registered mark in commerce for each class of goods specified in the registration, and the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “The substitute specimen was in use in commerce during the relevant period for filing the 6-year Section 8.”  37 C.F.R. §2.161(g); TMEP §1604.12(c).

Examples of specimens for goods are tags, labels, instruction manuals, containers, or photographs that show the mark on the actual goods or packaging.  See TMEP §§904.03 et seq.

RESPONSE TIME DEADLINE:  A complete response must be received within 6 months from the issuance date of this Office action or prior to expiration of the 10^th year anniversary date on August 7, 2011, whichever is later.  The owner must respond to all inquiries set forth in this Office action to avoid cancellation of the registration.  37 C.F.R. §2.163(b)-(c); TMEP §§1604.16, 1604.17(a).

DEFICIENCY SURCHARGE INFORMATION:  A $100 deficiency surcharge must be submitted if the response to this Office action is received by the Office after  August 7, 2011.  37 C.F.R. §§2.6, 2.164(a)(1); TMEP §1604.17(a).  (Note:  This only applies when the response time deadline above falls after the August 7, 2011.

ADVISORY:  If a response to this Office action is not filed within the response deadline above, and time remains in the grace period, the owner may avoid cancellation of its registration by filing a new affidavit of use within the grace period.  37 C.F.R. §2.163(c).  Additional fees are required to file a new affidavit during the grace period.  37 C.F.R. §2.161(d)(1)-(2).  For more information about this, please contact the undersigned.

Tammy Logan

Trademark Specialist

Office 571-272-4288

Fax     571-273-4288

TO RESPOND TO THIS LETTER:  Use the Trademark Electronic Application System (TEAS) Response to Post-Registration Office action form at http://www.gov.uspto.report/teas/eTEASpageC.htm.  Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the registration.  For technical assistance with online forms, e-mail TEAS@uspto.gov.

WHO MUST SIGN THE RESPONSE:  It must be personally signed by (1) an individual registrant; (2) someone with legal authority to bind registrant (i.e., a corporate officer, a general partner, all joint applicants); or (3) an authorized attorney, if one is appointed to represent registrant.  If a registrant is represented by an attorney, the attorney must sign the response.

CHECK THE STATUS OF THE REGISTRATION:  To check the status of your registration at any time, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.gov.uspto.report/.  Please keep a copy of the complete TARR screen.  For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.gov.uspto.report/teas/eTEASpageE.htm.

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED SPECIALIST.