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: 11/22/2011

Registration Number  3015837

The Section 7 Amendment submitted on November 10, 2011 is not accepted for the reasons set forth below.

The proposed amendment to the mark would materially alter the character of the mark and thus cannot be accepted.  15 U.S.C. §1057(e); 37 C.F.R. §2.173(d).  A registered mark can be amended only if the change does not alter the character and commercial impression of the mark, i.e., the change creates essentially the same impression as the original mark.  In re Umax Data System, Inc., 40 USPQ2d 1539 (Comm’r Pats. 1996); TMEP §1609.02(a).

The owner seeks to amend the mark in the registration from The mark consists of a design of a flag with one horizontal blue stripes at the top with the word TOMMY and the word HILFIGER at the bottom, and a two segment rectangles in which one segment is white and one segment is red to The mark consists of a design of a flag with one horizontal blue stripes at the top and bottom, and a two segment rectangles in which one segment is white and one segment is red and the words TOMMY HILFIGER located next to the flag design.  The proposed amendment would result in a mark with a different visual impression from that of the original mark, i.e., the two marks do not appear as essentially the same mark.  Accordingly, the Section 7 Amendment is not accepted.

To verify the contents of the Section 7 Amendment and specimen(s), as well as any submitted corrections or further amendments, the owner may submit the following statement and declaration under 37 C.F.R. §2.20, properly signed and dated:

The owner was using the amended mark in commerce on or in connection with the goods and/or services in the registration when the Section 7 Amendment was filed as evidenced by the specimen submitted.

The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statement may jeopardize the validity of this document, declares that s/he is properly authorized to execute this document on behalf of the owner, and all statements made of his/her own knowledge are true and that all statements made on information and belief are believed to be true.

__________________________

Signature of Authorized Person

__________________________

Type or Print Name

__________________________

Date

The following persons are authorized to sign a Section 7 Amendment on behalf of the owner:

(1)               A person with legal authority to bind the owner; and

(2)               An attorney as defined in 37 C.F.R. §11.1 who has actual or implied written or verbal power of attorney from the owner.

37 C.F.R. §2.173(a)(2).

The owner has six months from the issuance date of this letter to respond to all the issues raised in this letter.  In order to expedite the processing of your Section 7 Amendment, the early submission of a response to this letter is encouraged.  If a complete response is not received in the Office within this time period, then the Section 7 Amendment will be considered abandoned.  37 C.F.R. §2.176.  The fee for filing the Section 7 Amendment will not be refunded.

Sincerely,

Tamika Whitsey

TM Specialist

Post Registration Division

571-272-4321 office

571-273-4321 fax

tamika.whitsey@uspto.gov

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.