Offc Action Outgoing

AMIS

SEMICONDUCTOR COMPONENTS INDUSTRIES, LLC

Offc Action Outgoing

UNITED STATES DEPARTMENT OF COMMERCE

UNITED STATES PATENT AND TRADEMARK OFFICE

SERIAL NO: 76/194453

APPLICANT: AMI Semiconductor, Inc.

CORRESPONDENT ADDRESS:

MARK KUSNER

MARK KUSNER CO., LPA

HIGHLAND PLACE - SUITE 310

6151 WILSON MILLS ROAD

HIGHLAND HEIGHTS, OHIO 44143

RETURN ADDRESS:

Commissioner for Trademarks

2900 Crystal Drive

Arlington, VA 22202-3514

ecom113@uspto.gov

MARK: AMIS

CORRESPONDENT’S REFERENCE/DOCKET NO: AM7282US

CORRESPONDENT EMAIL ADDRESS:

Please provide in all correspondence:

1. Filing date, serial number, mark and

applicant's name.

2. Date of this Office Action.

3. Examining Attorney's name and

Law Office number.

4. Your telephone number and e-mail address.

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 76/194453

The examining attorney has reviewed the statement of use filed on February 25, 2003, ad determined the following.

The specimens for classes 9 and 16 are acceptable. However, the specimen for class 42 is not acceptable for the following reason.

Agreement of Mark and Specimen

The drawing displays the mark as AMI S and design. However, this differs from the display of the mark on the specimen, where it appears as AMIS. The applicant cannot amend the drawing to conform to the display on the specimen because the character of the mark would be materially altered. 37 C.F.R. §2.72(b); TMEP §§807.14, 807.14(a) and 807.14(a)(i).

Therefore, the applicant must submit a substitute specimen that shows use of the mark as it appears on the drawing. 37 C.F.R. §2.51; TMEP §807.14. The applicant must verify, with an affidavit or a declaration under 37 C.F.R. §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. §§2.59(b) and 2.72(b); TMEP §904.09.

The statement supporting use of the substitute specimen must read as follows:

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.

The applicant must sign this statement either in affidavit form or with a declaration under 37 C.F.R. §2.20; TMEP §§904.09 and 1109.09(b).

/Khanh M. Le/

Trademark Attorney

Law Office 113

(703) 308-9113 x127

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.