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  76/314811

 

On March 28, 2003, action on this application was suspended pending the disposition of Application Serial Nos. 76/066286 and 76/030338.  The referenced applications have been abandoned.  Therefore, registration is refused as follows.

 

Dates of Use

The following requirement is made FINAL.

 

THIS REQUIREMENT APPLIES TO CLASS(ES) 11, 12, 16, 18, 21, 25 and 28 ONLY.

 

Applicant must specify the date of first use of the mark anywhere and the date of first use of the mark in commerce, and verify these dates of use with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.71(c); TMEP §903.

 

These dates of use are required for an application based on use in commerce under Section 1(a) of the Trademark Act, and were omitted from the application.  Trademark Act Section l(a)(2), 15 U.S.C. §1051(a)(2); 37 C.F.R. §2.34(a)(1)(ii) and (iii); TMEP §§903 et seq.  Both a date of first use anywhere and a date of first use in commerce must be provided even if they are the same date.  TMEP §903.04.

 

Declaration Supporting Substitute Specimens

The following requirement is made FINAL.

 

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 at least as early as the filing date of the application.  37 C.F.R. §2.59(a); TMEP §904.09.

 

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

 

The substitute specimen was in use in commerce at least as early as the filing date of the application.

 

The applicant must sign this statement either in affidavit form or with a declaration under 37 C.F.R. §2.20; TMEP §904.09. 

 

Identification of Services

The following requirement is made FINAL.

 

THIS REQUIREMENT APPLIES TO CLASS(ES) 42 ONLY.

 

Applicant must clarify the identification of services by specifying the type of product information featured on the on-line searchable database featuring mouse pads, flashlights, lamps, license plate frames and holders, books, notebooks, pens, greeting cards, stickers, decals, tote bags, duffle bags, backpacks, luggage tags, umbrellas, mugs, tumblers, shirts, t-shirts, modem cords, vests, caps, hats, and other clothing items (e.g., on line searchable database featuring general consumer product information in the field of mouse pads, flashlights, lamps, license plate frames and holders, books, notebooks, pens, greeting cards, stickers, decals, tote bags, duffle bags, backpacks, luggage tags, umbrellas, mugs, tumblers, shirts, t-shirts, modem cords, vests, caps, hats, and other clothing items, in Class 35; or, on line searchable database featuring catalogs of others in the field of mouse pads, flashlights, lamps, license plate frames and holders, books, notebooks, pens, greeting cards, stickers, decals, tote bags, duffle bags, backpacks, luggage tags, umbrellas, mugs, tumblers, shirts, t-shirts, modem cords, vests, caps, hats, and other clothing items, in Class 35), and classify such services accordingly.  TMEP §1402.01.

 

Remarks

The Section 2(d) refusal is withdrawn.

 

Response to a Final Action

If applicant fails to respond to this final action within six months of the mailing date, the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond to this final action by: 

 

(1)   submitting a response that fully satisfies all outstanding requirements, if feasible (37 C.F.R. §2.64(a)); and/or

(2)   filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class (37 C.F.R. §§2.6(a)(18) and 2.64(a); TMEP §§715.01 and 1501 et seq.; TBMP Chapter 1200).

 

In certain circumstances, a petition to the Director may be filed to review a final action that is limited to procedural issues, pursuant to 37 C.F.R. §2.63(b)(2).  37 C.F.R. §2.64(a).  See 37 C.F.R. §2.146(b), TMEP §1704, and TBMP Chapter 1201.05 for an explanation of petitionable matter.  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

 

 

 

 

 

 

/Vivian Micznik First/

Vivian Micznik First

Trademark Attorney, Law Office 114

703-308-9114 ext. 149

 

 

 

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.