Offc Action Outgoing

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  76/330217

 

The assigned examining attorney has reviewed the Statement-of-Use filed on July 25, 2003, and has determined the following:

 

Specimens Not Acceptable to Show Use on Goods

 

The specimens are unacceptable as evidence of actual trademark use because they show the mark on a web page giving information about “SUPPLIER ANALYZER” and “PRODUCTS AND SERVICES.” That is, the specimens fail to show the mark as used on the actual goods, on packaging for the goods, or on screen displays generated by the goods. The submitted specimen is not such that the examining attorney may reasonably assume that consumers will make an association between the mark and the goods for which protection is sought. The submitted specimens constitute advertising   Invoices, announcements, order forms, bills of lading, leaflets, brochures, publicity releases and other printed advertising material generally are not acceptable specimens.  In re Bright of America, Inc., 205 USPQ 63 (TTAB 1979); TMEP sections 905.05 and 905.07.  See In re Ultraflight Inc., 221 USPQ 903 (TTAB 1984). 

 

The following types of items are generally considered to be merely advertising and, therefore, unless they comprise point-of-sale material, are not acceptable as specimens of use on goods:  advertising circulars and brochures, price lists, announcements, publicity releases, listings in trade directories, and business cards.  Moreover, material which is used by the applicant in conducting its internal business is unacceptable as specimens of use on goods.  These materials include all the papers whose sole function is to carry out the applicant's business dealings, such as invoices, bill heads, waybills and business stationery.  See In re Chicago Rawhide Mfg. Co., 455 F.2d 563, 173 USPQ 8 (C.C.P.A. 1972); In re Bright, supra; Varian Associates v. IMAC Corp., 160 USPQ 283 (N.D. Ill. 1968); Upco Co. v. Speed Crete of La., Inc., 154 USPQ 555 (TTAB 1967); Dynacolor Corp. v. Beckman & Whitley, Inc., 134 USPQ 410 (TTAB 1962); Pendleton Woolen Mills v. Eloesser-Heynemann Co., 133 USPQ 211 (TTAB 1962); Boss Co. v. Homemaker Rugs, Inc., 117 USPQ 255 (N.D. Ill. 1958).  As to display of marks on company uniforms, see In re McDonald's Corp., 199 USPQ 702 (TTAB 1978); Toro Manufacturing Corp. v. John B. Stetson Co., 161 USPQ 749 (TTAB 1969).

 

The applicant must submit a specimen showing use of the mark for the goods specified.  37 C.F.R. Sections 2.56 and 2.88(b)(2).  The applicant must verify, with an affidavit or a declaration under 37 C.F.R. Section 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. Section 2.59(b); TMEP section 905.10.

 

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. Section 2.20.  37 C.F.R. Section 2.71(c); TMEP section 904.05.

 

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney. For your convenience, current status and status date information is available, via push button telephone, for all federal trademark registration and application records maintained in the automated Trademark Reporting and Monitoring (TRAM) system.  The information may be accessed by calling (703) 305‑8747 from 6:30 a.m. until midnight, Eastern Time, Monday through Friday, and entering a seven‑digit registration number or eight‑digit application number, followed by the "#" symbol, after the welcoming message and tone.  Callers may request information for up to five registration number or application number records per call.

 

__________________________________________

/Ronald E. Aikens/

Trademark Office

Law Office 103

Tel: (703) 308-9103, ext. 128

Fax: (703) 746-6422

Ron.Aikens@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.