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  76/300566

 

This letter responds to the applicant’s communication filed on January 20, 2004.  The applicant that the notation 200 is a model number but could not provide evidence that other model numbers are used in conjunction with QBR.  Accordingly, the requirement for a new specimen is maintained and made FINAL.

 

FINAL REQUEST FOR NEW SPECIMEN BECAUSE DRAWING AND SPECIMEN DO NOT MATCH

In the first action, the applicant was advised that the drawing and specimen do not match.  The drawing displays the mark as QBR.  However, this differs from the display of the mark on the specimen, where it appears as QBR 200.  The examiner requested information on whether the term 200 was a model number.  The applicant was advised that if it is not found to be a model number, the applicant must submit a substitute specimen because the drawing and specimen do not match.  The applicant cannot amend the drawing to conform to the display on the specimen because the character of the mark would be materially altered.  37 C.F.R. Section 2.72(a); TMEP section 807.14(a).

In response to this, the applicant has stated that the notation 200 is a model number but that the applicant has not yet used other model numbers with QBR.  Because the applicant has not submitted actual evidence of use of the mark with other similar notations, the specimen is not acceptable.  The fact that the applicant contemplates using notations other than 200 with QBR is not sufficient.  Moreover, the fact that the applicant has other machines with different model numbers is not evidence that the term 200 as used with this particular mark is a model number.

 

The applicant has also submitted the cover for the product and argues that this demonstrates that the term 200 is a model number.  The product manual cover uses QBR in the form of MODEL QBR 200 BLOCK CUBER.  This is not evidence that the notation 200 is a model number but rather appears to suggest that the entire phrase QBR 200 BLOCK CUBER is a specific model.

 

The applicant has also argued that the term 200 is separate from QBR and in smaller letters.  This is simply not the case.  The overall commercial impression created by the specimen is that the mark is QBR 200 because the notation 200 is simply one space away from QBR and is in the same style of lettering. 

Therefore, the applicant must submit a substitute specimen that shows use of the mark as it appears on the drawing.  37 C.F.R. Section 2.51; TMEP section 807.14. 

 

Accordingly, the applicant must submit a specimen showing the mark as it is used in commerce.  37 C.F.R. § 2.56.  Examples of acceptable specimens are tags, labels, containers, and photographs that show the mark on the goods or packaging.  TMEP §§904.04 et seq. 

 

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); TMEP §904.09 and 1109.09(b).

 

If an amendment of the dates-of-use clause is necessary in order to state the correct dates of first use, the applicant must verify the amendment with an affidavit or a declaration in accordance with 37 C.F.R. §2.20.  37 C.F.R. §2.71(c); TMEP §§903.05 and 1109.09(a).

 

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

 

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. 

 

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)

 

This requirement is maintained and made FINAL.

 

RESPONSE OPTIONS

Applicant may respond to this final action by either:  (1) submitting a timely response that fully satisfies any outstanding requirements, if feasible; (2) timely filing an appeal of this final action to the Trademark Trial and Appeal Board; or (3) timely filing 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 and TMEP Chapter 1700.  If applicant fails to respond within six months of the mailing date of this refusal, the application will be abandoned.  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.

 

 

 

 

 

 

/Tanya Amos/

Trademark Examining Attorney

Law Office 113

(703) 308-9113 Ext. 135 Phone

(703) 746-6485 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 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.