Offc Action Outgoing

BOOTS

THE BOOTS COMPANY PLC

Offc Action Outgoing

UNITED STATES DEPARTMENT OF COMMERCE

UNITED STATES PATENT AND TRADEMARK OFFICE

SERIAL NO: 76/220018

APPLICANT: Boots Company USA (Holdings) Inc., The

CORRESPONDENT ADDRESS:

LAWRENCE E ABELMAN

ABELMAN FRAYNE & SCHWAB

150 E 42ND ST

NEW YORK NY 10017-5612

RETURN ADDRESS:

Commissioner for Trademarks

2900 Crystal Drive

Arlington, VA 22202-3514

MARK: BOOTS

CORRESPONDENT’S REFERENCE/DOCKET NO: 726644

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 76/220018

The assigned examining attorney has reviewed the statement of use filed on April 29, 2004 and has determined the following.

The specimen does not show use of the mark for the services identified in the statement of use. Specifically, instead of showing the mark in the sale or advertising of “retail store and electronic retail services” the specimens appear to merely show the mark above a shelf of the applicant’s International Class 3 goods. Therefore, while the specimens may show the mark in relation to goods, the specimens do not show that the applicant itself is providing the identified retail services.

Accordingly, the applicant must submit a specimen showing use of the mark for the services specified. 37 C.F.R. §§2.56 and 2.88(b)(2); TMEP §1109.09(b). Examples of acceptable specimens are signs, photographs, brochures or advertisements that show the mark used in the sale or advertising of the services. TMEP §§1301.04 et seq.

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); TMEP §904.09.

If an amendment of the dates-of-use clause is necessary in order to state the correct dates of first use, the applicant must verify the amendment with an affidavit or a declaration in accordance with 37 C.F.R. §2.20. 37 C.F.R. §2.71(c); TMEP §§903.05 and 1109.09(a).

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

/Martha L. Fromm/

Martha L. Fromm

Trademark Attorney

Law Office 106

Phone: (703) 308-9106 ext. 221

Fax: (703) 746-8106 (formal responses)

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 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.