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  76/271899

 

The assigned examining attorney has reviewed the statement of use filed on November 18, 2004, and has determined the following.

 

THIS REFUSAL APPLIES TO INTERNATIONAL CLASS 21 ONLY

 

The specimen submitted for the goods in International Class 21 is shows a package labeled “CD/DVD Cleaner.”  While the contents cannot be identified precisely, they do not appear to include any “anti-static wipes.”  Those are the goods in the application in that class.

 

Applicant must submit a specimen showing use of the mark for the goods specified in the application, because the specimen currently of record does not show use of the mark for any International Class 21 goods identified in the statement of use.  37 C.F.R. §§2.56 and 2.88(b)(2); TMEP §1109.09(b).  Applicant must also submit a statement that “the substitute specimen was in use in commerce prior to the expiration of the time allowed applicant for filing a statement of use,” verified with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.59(b)(2); TMEP §904.09.

 

The following is a sample declaration under 37 C.F.R. §2.20 with a supporting statement for a substitute specimen:

 

The undersigned being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements and the like may jeopardize the validity of the application or document or any registration resulting there from, declares that the substitute specimen was in use in commerce at least as early as the filing date of the application; 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)

 

If the declaration is filed electronically through TEAS, then applicant should sign the declaration by entering a “symbol” that applicant has adopted as a signature (e.g., /john doe/, /drl/, and /544-4925/).  The Office will accept any combination of letters, numbers, spaces and/or punctuation marks as a valid signature if it is placed between two forward slash (“/”) symbols.  37 C.F.R. §§ 2.33(d) and 2.193(c)(1)(iii); TMEP §§304.08 and 804.05.

 

If applicant submits a response via electronic means, please note that the substitute specimen must be a digitized image submitted in .jpg format.  37 C.F.R. §2.56(d)(4).

 

Pending an adequate response to the above, registration is refused because the specimen of record for International Class 21 does not show use of the proposed mark as a trademark.  Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051, 1052 and 1127; TMEP §§904.11 and 1202 et seq.

 

The stated refusal refers to Class 21 only and does not bar registration in the other classes.  Applicant may respond to the stated refusal by doing one of the following:

 

(1)               deleting the class to which the refusal pertains;

 

(2)               arguing against the refusal of the combined application as a whole;

 

(3)               filing a request to divide out the goods and/or services that have not been refused registration, so that the mark may be published for opposition in the classes to which the refusal does not pertain (See 37 C.F.R. §2.87 and TMEP §§l 110.05 and 1403.03 regarding the requirements for filing a request to divide).

 

If applicant should fail to respond to this Office action within the six month time limit, then International Class 21 will be deleted from the application and the application will proceed forward for International Classes 8, 9 and 16 only.  37 C.F.R. §2.65(a).

 

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

 

/Melvin T. Axilbund/

Melvin T. Axilbund

Examining Attorney, Law Office 113

571/272-9424

 

How to respond to this Office Action:

 

You may respond formally using the Office's Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://eteas.gov.uspto.report/V2.0/oa242/WIZARD.htm and follow the instructions therein, but you must wait until at least 72 hours after receipt if the office action issued via e-mail).  PLEASE NOTE: Responses to Office Actions on applications filed under the Madrid Protocol (Section 66(a)) CANNOT currently be filed via TEAS.

 

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

 

Change in USPTO Trademark Contact Information

 

The Trademark Operation has relocated to Alexandria, Virginia. 

 

Trademark-related paper mail (except documents sent to the Assignment Services Division for recordation, certain documents filed under the Madrid Protocol, and requests for copies of trademark documents) must be sent to:

 

                        Commissioner for Trademarks

                        P.O. Box 1451

                        Alexandria, VA  22313-1451

 

Applicants, registration owners, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at www.uspto.gov.  To submit a fax response to this Office action, send your response to the Law Office 113 fax number, namely 571/273-9113.