UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/311970
APPLICANT: GWW Group, Inc.
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CORRESPONDENT ADDRESS: ULANA HOLUBEC, ESQ. BROWN, PINNISI & MICHAELS PC M &T BANK BUILDING 118 N TIOGA ST ITHACA NY 14850-4354 |
RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom115@uspto.gov
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MARK: NOUVEAU
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CORRESPONDENT’S REFERENCE/DOCKET NO: GWI-6
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 76/311970
This letter responds to the applicant’s communication filed on September 8, 2003. The examining attorney acknowledges the applicant’s arguments by way of response. Upon reconsideration the examining attorney withdraws the Drawing/Specimen Agreement requirement. For reasons that follow, however, the specimen requirement is maintained and made FINAL.
In the initial Office Action responsive to the Statement of Use, dated March 7, 2003, the examining attorney found that the specimen was unacceptable as evidence of actual trademark use for goods in class 13 or class 25 because the specimen was in the nature of advertising and promotional material. The applicant was advised to supply substitute specimens for each class of goods supported by a declaration under 37 C.F.R. section 2.20, preferably in the form of tags, labels, packaging and the like.
By way of response, the applicant does neither disputes the basis of the examining attorney’s rejection nor files substitute specimens, but instead requests additional time to provide an acceptable substitute specimen.
The specimens of record remain unacceptable. The statutory period for response to an examining attorney’s Office action is six months. 15 U.S.C. §1062(b); 37 C.F.R. §2.62. The examining attorney has no discretion to shorten or extend this period. TMEP section 711. However, because this is a new Final Action, the applicant has six (6) months to respond and provide an acceptable substitute specimens. The applicant should note that acceptable substitute specimens should support each class of goods and should further be supported by a declaration under 37 C.F.R. section 2.20
For the forgoing reasons and those recited in the initial office action responsive to the statement of use, the specimen requirement is maintained and made FINAL. 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 and TMEP Chapter 1700. 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).
The applicant is invited to telephone the examining attorney to discuss the acceptability of any proposed specimens prior to their formal submission.
/John S. Yard/
Trademark Examining Attorney
Law Office 115
(703) 308-9115 x209
ecom115@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.