UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE. 

 

 

Serial Number  76/161806

 

This letter responds to the applicant’s communication filed on March 13, 2003 in which the applicant submitted arguments against the requirement that the applicant’s drawing of the mark match the use of the mark on the specimen of record.  The examining attorney has considered the applicant’s arguments, but has found them unpersuasive.  Therefore, the requirement that the drawing match the specimens of use is hereby maintained and made FINAL.

 

Drawing Does Not Match Specimens – Final Refusal

The drawing displays the mark as FLATMAN.  However, this differs from the display of the mark on the specimen, where it appears as KILOVAC FLATMAN (with the additional generic term RELAY).  The applicant must either:

 

(1)  submit a new drawing of the mark that agrees with the specimen, namely, KILOVAC FLATMAN; or

 

(2)  submit a substitute specimen that shows use of the mark shown in the drawing.

 

The applicant may not amend the drawing if the amendment would materially alter the character of the mark.  37 C.F.R. Section 2.72(b); TMEP section 807.14(a).

 

If a substitute specimen is submitted, the applicant must verify, with an affidavit or a declaration under 37 C.F.R. Section 2.20, that the substitute specimen was in use in commerce prior to the expiration of the time allowed to the applicant for filing a statement of use.  37 C.F.R. Sections 2.59(b) and 2.72(b); TMEP section 905.10.

 

The examining attorney notes that each of the cases relied upon by the applicant are clearly distinguishable for the facts in the instant case.  The examining attorney further notes that it is well established that one may use a composite mark in connection with a product and register separately its several elements if each element is used in such a manner as to create a separate and distinct commercial impression from the other elements and does in fact, per se, identify and distinguish this product from the products of others.  [Emphasis added].  See In re Ohmite Manufacturing Company, 134 USPQ 30 (TT&A Bd., 1962); In re Schenectady Varnish Company, Inc., 126 USPQ 395 (CCPA, 1960); In re Esso Standard Oil Company, 134 USPQ 402 (CCPA, 1962); In re W. B. Roddenbery Co., Inc., 135 USPQ 215 (TT&A Bd., 1962); In re Emco, Inc., 158 USPQ 622 (TT&A Bd., 1968); and In re Hehr manufacturing Company, 126 USPQ 381 (CCPA, 1960). 

 

In the instant case, the use of the wording “Kilovac Flatman Relay” on the specimen is entirely in the same font, in the same size, and on the same line.  Potential consumers encountering the mark as used on the specimen of record will not be able to distinguish the FLATMAN portion of the mark alone as identifying the name or source of the goods.  Specifically, the designation FLATMAN as used on the specimen does not create a separate and distinct commercial impression apart from the entire term KILOVAC FLATMAN.

 

Since the applicant has a prior registration for the mark KILOVAC for relays, the applicant may amend the drawing in the present application to match the mark used on the specimen, namely, KILOVAC FLATMAN.  However, the applicant may not register the mark FLATMAN alone based upon the specimen made of record. 

 

Options

Please note that the only appropriate responses to a final action are either (1) compliance with the outstanding requirements, if feasible, or (2) filing of an appeal to the Trademark Trial and Appeal Board.  37 C.F.R. Section 2.64(a).  If the applicant fails to respond within six months of the mailing date of this refusal, this Office will declare the application abandoned.  37 C.F.R. Section 2.65(a).

 

 

 

/Michael Kazazian/

Trademark Examining Attorney

Law Office 113

(703) 308-9113 ext. 207

ecom113@uspto.gov

 

 

 

 

How to respond to this Office Action:

 

To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.gov.uspto.report/teas/index.html and follow the instructions.

 

To respond formally via E-mail, visit http://www.gov.uspto.report/web/trademarks/tmelecresp.htm and follow the instructions.

 

To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the serial number, law office and examining attorney’s name on the upper right corner of each page of your response.

 

To check the status of your application at any time, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.gov.uspto.report/

 

For general and other useful information about trademarks, you are encouraged to visit the Office’s web site at http://www.gov.uspto.report/main/trademarks.htm

 

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