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  76/321045

 

Responsive to applicant’s statement of use received December 17, 2002.

Mark Differs on Drawing and Specimen – Statement of Use

 

The drawing displays the mark as STITCHBACKERS (single word).  However, this differs from the display of the mark on the specimen, where it appears as STITCH BACKERS (two words).  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).

 

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.

 

If applicant submits a substitute drawing which breaks up the mark into two separate words, a disclaimer of the descriptive term “stitch” should be submitted.  The term is merely descriptive because it identifies a feature of applicant’s embroidery backings which are designed to stabilize the “stitching” on a garment or other textile.  (See dictionary definition below.)

Standard Form Disclaimer

 

The computerized printing format for the Trademark Official Gazette requires a standard form for a disclaimer.   TMEP §1213.08(a)(i).  A properly worded disclaimer should read as follows:

 

No claim is made to the exclusive right to use STITCH apart from the mark as shown.

 

See In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).

 

Allowance of applicant’s statement of use is deferred pending applicant’s response to the above noted issues.

 

stitch

 
stitch (stîch) noun

Abbr. st.

1.    A single complete movement of a threaded needle in sewing or surgical suturing.

2.    a. A single loop of yarn around an implement such as a knitting needle. b. The link, loop, or knot made in this way.

3.    A mode of arranging the threads in sewing, knitting, or crocheting: a purl stitch.

4.    A sudden sharp pain, especially in the side. See synonyms at pain.

5.    Informal. An article of clothing: wore not a stitch.

6.    Informal. The least part; a bit: didn't do a stitch of work.

7.    A ridge between two furrows.

 

verb

stitched, stitch·ing, stitch·es verb, transitive

1.    a. To fasten or join with or as if with stitches. b. To mend or repair with stitches: stitched up the tear.

2.    To decorate or ornament with or as if with stitches: “The sky was stitched with stars” (Mario Puzo).

3.    To fasten together with staples or thread.

 

verb, intransitive

To make stitches; sew.

 

— idiom.

in stitches Informal.

Laughing uncontrollably.

 [Middle English stiche, from Old English stice, sting.]

— stitch¹er noun[1]

 

 

/Russ Herman/

Attorney

Law Office 108

(703) 308-9108 (214)

(703) 746-8108 (fax)

ecom108@uspto.gov

russ.herman@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.