UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

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  76/294679

 

FINAL OFFICE ACTION AFTER STATEMENT OF USE

 

The assigned examining attorney has reviewed the response filed on December 12, 2002, and has determined the following.

 

Specimen-Drawing Agreement

 

In the office action dated June 12, 2002, the applicant was notified that its drawing and specimen did not agree and that a substitute specimen must be submitted.  The examining attorney has considered the applicant’s arguments carefully but found them unpersuasive.  Accordingly, the specimen requirement is hereby maintained and made FINAL.

 

The drawing displays the mark as a design.  However, this differs from the display of the mark on the specimen, where it appears as a design with the wording COPPERTONE SPORT embedded therein.  The examining attorney does not find these elements to be severable or that the design has a commercial impression separate from that of the mark as it appears on the specimen in its entirety. 

 

Furthermore, the examining attorney notes that the applicant for the first time argues that the mark is an S.  The applicant has never characterized its mark as such previously, calling it a “miscellaneous design” on all papers submitted.  In fact, the description of the mark in the original  application reads: “The mark consists of two curved arch shapes lined for the colors gold and silver on an imperfect blue oval.”  Thus, the examining attorney takes exception with the applicant’s implication that the examining attorney concedes that the mark, without the wording COPPERTONE SPORT embedded within, would be perceived as an S by consumers.  Not even the applicant had characterized the mark as an S previously, and the examining attorney has made and currently makes no such concession.  Regardless, whether the mark is a broken S with the wording embedded within or “two curved arch shapes” and a “miscellaneous design” as it was originally and consistently characterized, the examining attorney finds the mark to be unitary for the reasons discussed above.

 

Accordingly, the applicant must either:

 

(1)  submit a new drawing of the mark that agrees with the specimen; or

 

(2)  submit a substitute specimen that shows use of the mark shown in the drawing.

 

The applicant may not amend the drawing if the amendment would materially alter the character of the mark.  37 C.F.R. §2.72(b); TMEP §§807.14, 807.14(a) and 807.14(a)(i).  The examining attorney notes the applicant’s registration of the wording COPPERTONE SPORT, Registration No. 2,230,833, for the same goods.  Thus, the applicant may amend its drawing to include this wording and it would not be a material alteration of the mark.  TMEP §807.14(a)

 

If a substitute specimen is submitted, 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) and 2.72(b); TMEP §904.09.

 

Filing Fee Advisory - 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. 

 

Responding to a Final Office Action

 

Please note that the only appropriate responses to a final action are (1) compliance with the outstanding requirements, if feasible, (2) filing of an appeal to the Trademark Trial and Appeal Board, or (3) filing of a petition to the Director if permitted by 37 C.F.R. §2.63(b). 37 C.F.R.

§2.64(a); TMEP §715.01.  Regarding petitions to the Director, see 37 C.F.R. §2.146; TMEP Chapter 1700 regarding petitions.  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. §2.65(a).

 

 

 

 

/Stacy B. Wahlberg/

Trademark Attorney

Law Office 113

(703) 308-9113 ext. 206

LO Fax: (703) 746-8113

LO Email: ecom113@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.