UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/229791
APPLICANT: Getty TM Corp.
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CORRESPONDENT ADDRESS: HARRIET E PERKINS DRINKER BIDDLE & REATH LLP ONE LOGAN SQUARE 18TH & CHERRY STREETS PHILADELPHIA PA 19102 |
RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3513 ecom104@uspto.gov
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MARK: GETTY
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
CORRESPONDENT EMAIL ADDRESS:
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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.
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Serial Number 76/229791
The Office has reassigned this application to the undersigned examining attorney.
The examining attorney has reconsidered the application and has determined the following.
Likelihood of Confusion
The refusal as set forth in the prior Office Actions is herein incorporated by reference and is maintained and continued.
Concurrent Use
Please refer to the relevant portion of the TMEP regarding the eligibility to file for concurrent use.
An applicant is eligible to request a registration subject to concurrent use if it meets one or more of the following criteria:
(1) The concurrent use request is sought pursuant to a decree of a court of competent jurisdiction reflecting its final determination of the rights of the concurrent user;
(2) The owner of the registration consents to the grant of a concurrent use registration to the applicant; or
(3) The applicant’s date of first use in commerce is before the filing date of the pending applications or of any registrations issued under the Trademark Act of 1946. When a party specified as an excepted user does not own an application or registration, the applicant’s date of first use in commerce is before the filing date of any application to register the mark that may be filed by the excepted user.
The applicant has the burden of proving that it is entitled to a concurrent use registration. 37 C.F.R. §2.99(e).
The applicant does not meet the three eligibility criteria for any of the registrations. The current use request is not sought pursuant to a decree of court, the consent of the owner(s) of the registrations to the grant of a concurrent use registration is not made of record, and the applicant’s date of first use in commerce, in this case July 9, 1996, is not before the filing dates of any of the registrations. Therefore, at this time, the applicant is not eligible to request a concurrent use registration.
The statement for concurrent use may be in the following form:
Subject to Concurrent Use Proceeding with Registration Nos. [LIST registrations nos.]
Applicant claims exclusive right to use the mark in the area comprising [LIST THE AREA FOR WHICH THE APPLICANT SEEKS REGISTRATION, and not listed as an exception] See TMEP § 1207.04(e)(1).
If the applicant can meet an eligibility criteria as set forth above for the registrations, the applicant must fulfill the requirements of a concurrent use application for all registrations. The applicant may wish to refer to TMEP §§ 1207.04(d)(i).
The applicant has stated in the original application that Registration No. 2055644 for the mark Getty was assigned to the applicant by an agreement on December 9, 2000. However, the assignment has not been made of record. It may be helpful to include a coy of the assignment in the record to allow proper examination.
The Amendment to Allege Use is accepted.
/Alex S. Keam/
Attorney
Law Office 114
Phone: (703) 308-9114 ext. 140
Fax: (703) 746-6108
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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.