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  76/274365

 

The assigned examining attorney has reviewed the statement of use filed on June 23, 2004 and has determined the following.

 

Mark Differs on Drawing and Specimen

 

The mark as depicted on the drawing disagrees with the mark as it appears on the specimen, and clarification is required.  Applicant must submit a substitute specimen that shows use of the mark as it appears on the drawing and include a statement that “the substitute specimen was in use in commerce prior to the expiration of the time allowed to 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. §§2.51, 2.59(b) and 2.72(b); TMEP §§807.14 and 904.09

 

In the present case, the drawing displays the mark as ACTISEAL, and the specimen shows the mark as ACTISEAL MULTI-WELL SAMPLING SYSTEM.  Applicant may not amend the drawing to conform to the display on the specimen because the essence or character of the mark would be materially altered, i.e., the mark on the specimen creates a different commercial impression from the mark on the drawing.  37 C.F.R. §2.72(b); TMEP §§807.14, 807.14(a) and 807.14(a)(i).  In addition, applicant may not withdraw the statement of use.  37 CFR §2.88(g).

The examining attorney has enclosed the following example of a substitute specimen declaration for the applicant’s use in preparing their own declaration.

 

SUBSTITUTE SPECIMEN DECLARATION

Serial No.:

Mark:                                               

Applicant:                       

 

The substitute specimen was in use in commerce prior to the expiration of the time allowed to applicant for filing a statement of use.

 

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, if applicable)

                        _____________________________

                                    (Date)

 

Miscellaneous

Change of Address - Applicants may now file changes of correspondence address via a new form on TEAS.   Address changes may be performed on up to 20 cases at a time.  The Trademark Office strongly encourages applicants to use this time-saving form which is available online at: http://eteas.gov.uspto.report/V2.0/ca200/WIZARD.htm

 

Status Inquiry – Applicants may retrieve information about pending and registered trademarks from the USPTO’s database by simply entering a valid trademark serial number or registration number at:  http://tarr.uspto.gov.

 

Additionally, applicants may contact the Trademark Assistance Center at:  703-308-9000.

 

If you need information regarding the application process or applying for a Trademark, please access other resources on the Trademark Web page such as: Frequently-Asked Questions or Basic Facts about Trademarks.  More detailed information is available in the Trademark Manual of Examining Procedure and the Acceptable Identification of Goods and Services Manual. 

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

 

NOTICE:  TRADEMARK OPERATION RELOCATING OCTOBER AND NOVEMBER  2004

 

The Trademark Operation is relocating to Alexandria, Virginia, in October and November 2004.  Effective October 4, 2004, all 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.

 

My Law Office will move on November 1, 2004.  To reach me by phone AFTER that date call (571) 272-9328. 

 

To submit a fax response to this Office action after that date, send your response to the Law Office fax number, namely (571) 273-9106.

 

 

/Leslie L. Richards/

Trademark Examining Attorney

Law Office 106

703-308-9106 ext. 172

703-746-8106 fax

 

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.