UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/332980
APPLICANT: Taiwan Semiconductor Manufacturing Co., ETC.
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CORRESPONDENT ADDRESS: Susan Okin Goldsmith, Esq. Duane Morris LLP Suite 100 100 College Road West Princeton NJ 08540 |
RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514
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MARK: NEXSYS
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CORRESPONDENT’S REFERENCE/DOCKET NO: 8991-0011
CORRESPONDENT EMAIL ADDRESS: sogoldsmith@duanemorris.com |
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 76/332980
The assigned examining attorney has reviewed the statement of use filed on 4-29-04 and has determined the following.
Specimens
Applicant’s specimens are unacceptable because they do not show use of the mark for any services identified in the application. Specimens are unacceptable if they do not show use of the service mark in relation to the identified service. Intermed Communications, Inc. v. Chaney, 197 USPQ 501 (TTAB 1977). The specimens must show use of the mark "in the sale or advertising of services." Trademark Act Section 45, 15 U.S.C. Section 1127; In re Universal Oil Products Co., 476 F.2d 653, 177 USPQ 456 (CCPA 1973); The applicant must submit specimens which show how the applicant uses the mark in commerce with the services, namely, the mark in reference to the particular services identified. A mark is deemed to be used in commerce "on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce...." Trademark Act Section 45, 15 U.S.C. Section 1127. (One must be able to see the mark on the specimens and know what the services are by looking at those specimens.)
Therefore, the applicant must submit a specimen showing the mark as it is used in commerce. 37 C.F.R. §2.56. Examples of acceptable specimens are signs, photographs, brochures or advertisements that show the mark used in the sale or advertising of the services. TMEP §§1301.04 et seq. 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/sou/aau. 37 C.F.R. §2.59(a); TMEP §904.09. The statement supporting use of the substitute specimens must read as follows:
The substitute specimens were in use in commerce at least as early as the filing date of application/sou/aau
The applicant must sign this statement either in affidavit form or with a declaration under 37 C.F.R. Section 2.20.
The following is a properly worded declaration under 37 C.F.R. Section 2.20. At the end of the response, the applicant should insert the declaration signed by applicant.
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 statements may jeopardize the validity of the application or any resulting registration, declares that the facts set forth in this application are true; all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.
_____________________________
(Signature)
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(Print or Type Name and Position)
_____________________________
(Date)
If the applicant has any questions or needs assistance in responding to this Office action, please email the assigned examining attorney.
/tmm/
Theodore McBride
Trademark Attorney
Law Office 103
theodore.mcbride1@uspto.gov
703-308-9103 x 129
Fax: 703-746-6498
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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.