Offc Action Outgoing

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  76/229776

 

The assigned examining attorney has reviewed the referenced application and determined the following.

 

This letter responds to the applicant's communication filed on July 30, 2003.

 

The prior Office Action(s) is/are incorporated by reference.

 

Drawing Differs from Specimens

 

The drawing displays the mark as GETTY with a design of an atom or similar design in the middle of the letter “g.”  However, this differs from the display of the mark on the specimens, where the design is merely a circle.  The applicant cannot amend the drawing to conform to the display on the specimens because the character of the mark would be materially altered.  37 C.F.R. Section 2.72(a). 

 

The applicant submitted a substitute specimen for the services in international class 37, which consists of a sign.  However, it has not submitted substitute specimens for the other classes of goods and services in international classes 1, 4, and 39.

 

Therefore, the applicant must submit substitute specimens (one for each class) which show use of the mark as it appears on the drawing.  37 C.F.R. Section 2.51.  The applicant must verify, with an affidavit or a declaration under 37 C.F.R. Section 2.20, that the substitute specimens are in use in commerce.  37 C.F.R. Sections 2.59(b) and 2.72(c); TMEP § 904.09 and 1104.09(e).

 

Examples of acceptable specimens for goods are tags, labels, instruction manuals, containers, and photographs that show the mark on the goods or packaging.  Examples of acceptable specimens for services 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 may withdraw the amendment to allege use.  If the applicant does so, the examining attorney will withdraw the requirement for substitute specimens.

 

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

 

The applicant used the substitute specimen in commerce prior to filing the amendment to allege use.

 

The applicant must sign this statement either in affidavit form or with a declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.59(b)(1). 

 

The following is a properly worded declaration under 37 C.F.R. §2.20.  At the end of the response, the applicant should insert the declaration signed by a person authorized to sign under 37 C.F.R. §2.33(a).

 

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 statements may jeopardize the validity of the application or any resulting registration, declares that the facts set forth in this application are true; all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.

 

_____________________________

(Signature)

_____________________________

(Print or Type Name and Position)

_____________________________

(Date)

 

The requirement is maintained and made FINAL.

 

Appellate Remedy

 

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).

 

All other Amendment(s) and submissions has/have been accepted.  Because the requirements for the Amendment to Allege Use have not been fully satisfied, the concurrent use request cannot proceed at this time.

 

Fee increase effective January 1, 2003

Effective January 1, 2003, the fee for filing an application for trademark registration will be increased to $335.00 per International Class.  The USPTO will not accord a filing date to applications that are filed on or after that date that are not accompanied by a minimum of $335.00. 

 

Additionally, the fee for amending an existing application to add an additional class or classes of goods/services will be $335.00 per class for classes added on or after January 1, 2003.

 

 

 

/Alex S. Keam/

Attorney

Law Office 114

Phone: (703) 308-9114 ext. 140

Fax:  (703) 746-8114

Email for Responses:  ecom114@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.