To: | CAREFUSION 205, INC. (jdreitler@ustrademarklawyer.com) |
Subject: | TRADEMARK REGISTRATION NO. 3042135 - THE ADVANTAGE SERIES - N/A |
Sent: | 03/23/12 09:33:46 AM |
Sent As: | PRG@uspto.gov |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT REGISTRANT’S TRADEMARK REGISTRATION
REGISTRATION NO. 3042135
REGISTRANT: CAREFUSION 205, INC.
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CORRESPONDENT’S ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/teas/eTEASpageC.htm
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MARK: THE ADVANTAGE SERIES
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CORRESPONDENT’S REFERENCE/DOCKET NO. N/A
CORRESPONDENT’S EMAIL ADDRESS: |
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ISSUE/MAILING DATE: 3/23/2012
Registration Number 3042135
The Section 8 Affidavit, filed on January 24, 2012, is not accepted for the reason(s) set forth below.
Material that functions merely to tell prospective purchasers about the goods, or to promote the sale of the goods, is not acceptable to show trademark use. TMEP §904.04(b). Leaflets, handbills, brochures, advertising circulars and other advertising material, while normally acceptable for showing use in connection with services, generally are not acceptable specimens for showing trademark use in connection with goods. See In re MediaShare Corp., 43 USPQ2d 1304, 1307 (TTAB 1997); In re Schiapparelli Searle, 26 USPQ2d 1520, 1522 (TTAB 1993); TMEP §§904.04(b), (c), 1301.04.
A printed or web catalog, web page or similar specimen is acceptable to show trademark use as a display associated with the goods only if it includes the following: (1) a picture of the relevant goods or a textual description that identifies the actual features or inherent characteristics of the goods such that the goods are recognizable, (2) the mark appearing sufficiently near the picture or textual description of the goods so as to associate the mark with the goods, and (3) information necessary to order the goods (e.g., an order form or a phone number, mailing address, or e-mail address for placing orders) or a visible weblink to order the goods. See In re Sones, 590 F.3d at 1288-89, 93 USPQ2d at 1123-24; In re Genitope, 78 USPQ2d at 1822; In re Dell, 71 USPQ2d at 1727-29; Lands’ End, 797 F. Supp. at 513-14, 24 USPQ2d at 1316; TMEP §904.03(h). Without this necessary information, the specimen is mere advertising and is not acceptable to show use in commerce for goods. See, e.g., In re Osterberg, 83 USPQ2d 1220, 1222-24 (TTAB 2007); In re Genitope, 78 USPQ2d at 1822.
Therefore, the owner must submit the following:
(1) A substitute specimen showing current use of the registered mark in commerce for each class of goods specified in the registration; and
(2) The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “The substitute specimen was in use in commerce during the relevant period for filing the 6-year Section 8.” 37 C.F.R. §2.161(g); TMEP §1604.12(c).
Examples of specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale. See TMEP §§904.03 et seq.
The owner was using the mark in commerce on or in connection with the goods and/or services identified in the registration for which use of the mark in commerce is claimed, as evidenced by the submitted specimen, during the relevant period for filing the 6-year Section 8.
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 statement may jeopardize the validity of this document, declares that s/he is properly authorized to execute this document on behalf of the owner, and all statements made of his/her own knowledge are true and that all statements made on information and belief are believed to be true.
__________________________
Signature of Authorized Person
__________________________
Type or Print Name
__________________________
Date
The following persons are properly authorized to sign a Section 8 Affidavit on behalf of the owner:
(1) A person with legal authority to bind the owner (e.g., a corporate officer or general partner);
(2) A person with firsthand knowledge of the facts and actual or implied authority to act on behalf of the owner; or
(3) An authorized attorney who has an actual written or verbal power of attorney or an implied power of attorney from the owner.
37 C.F.R. §§2.161(b), 2.193(e)(1); TMEP §1604.08(a).
DEFICIENCY SURCHARGE: The owner must submit a $100 deficiency surcharge if its response to this Office action is received after the expiration of the grace period, i.e., after July 10, 2012. 37 C.F.R. §§2.6, 2.164(a)(2); TMEP §1604.17(b).
/tamika whitsey/
Sincerely,
Tamika Whitsey
TM Specialist
tamika.whitsey@uspto.gov
571-272-4321 office 571-273-4321 fax
TO RESPOND TO THIS LETTER: Use the Trademark Electronic Application System (TEAS) Response to Post-Registration Office action form at http://www.gov.uspto.report/teas/eTEASpageC.htm. Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the registration. For technical assistance with online forms, e-mail TEAS@uspto.gov.
WHO MUST SIGN THE RESPONSE: It must be personally signed by (1) an individual registrant; (2) someone with legal authority to bind registrant (i.e., a corporate officer, a general partner, all joint applicants); or (3) an authorized attorney, if one is appointed to represent registrant. If a registrant is represented by an attorney, the attorney must sign the response.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/teas/eTEASpageE.htm.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED SPECIALIST.
PLEASE ENCLOSE THIS FORM WITH YOUR RESPONSE
**This form must be included with your response to ensure proper fee processing.**
The Post Registration Paralegal has determined that the amounts indicated below are outstanding:
$________ Section 8 affidavit filing fee (fee code 6205)
$________ Section 8 affidavit grace period surcharge (fee code 6206)
$________ Section 8 affidavit deficiency surcharge (fee code 6207)
$________ Section 9 renewal application filing fee (fee code 6201)
$_____ Section 9 renewal application grace period surcharge (fee code 6203)
$________ Section 9 renewal application deficiency surcharge (fee code 6204)
$________ Section 15 affidavit filing fee (fee code 6208)
$________ Section 7 correction (registrant error) filing fee (fee code 6212)
$________ Section 7 amendment filing fee (fee code 6214)
$________ Section 7 issue new certificate of registration filing fee (fee code 6211)
$__100__ Deficiency surcharge Sec. 8—if response filed after July 10, 2012(fee code 6207)
Date