Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION / ELECTRONIC RESPONSE

 

 

RESPONSE TIME LIMIT:  THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE.  You may respond via regular mail to the address listed above, or electronically via the link noted below.  In the body of the response, please clearly state the applicant’s name, mark, serial number, Law Office and Examining Attorney.  Also, e-mail responses must (1) include the entire response as e-mail text, not as an attachment; (2) list the serial number in the “Subject” line; (3) be signed electronically (using the same format accepted for electronically filed applications - the signatory must enter any combination of alpha/numeric characters that has been specifically adopted to serve the function of the signature, preceded and followed by the forward slash (/) symbol. Acceptable “signatures” could include: /john doe/; /jd/; and /123-4567/.  (See 64 FR 33056, 33062 (June 21, 1999))); (4) include any attachments, specimens or evidence in JPG or GIF format only, and (5) address every issue raised.

 

Formal electronic responses to be submitted via: http://www.gov.uspto.report/teas/index.html

 

 

MAILING/E-MAILING DATE INFORMATION:  If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.

 

Serial Number  76/339991

 

The assigned examining attorney has reviewed the Statement-of-Use filed on December 1, 2005, 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 in relation to a description of the goods, yet the goods do not display the mark on the actual goods.  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).

 

A catalog or similar specimen is a specimen sufficient to show use because it is a display associated with the goods, provided that (1) it includes a picture of the relevant goods, (2) it includes the mark sufficiently near the picture of the goods to associate the mark with the goods, and (3) it includes information necessary to order the goods.  Land’s End Inc. v. Manbeck, 797 F. Supp. 511, 24 USPQ 1314 (E.D. Va. 1992).

 

Here, the specimen fails to include, “information necessary to order the goods.”

 

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.

 

Contact and Status Update Information

 

The applicant may view and download any or all documents contained in the electronic file wrapper of all pending trademark applications, as well as many registrations via the Trademark Document Retrieval (TDR) system available online at:

 

<http://portal.gov.uspto.report/external/portal/tow>. 

 

Currently, you can access all pending applications and all Madrid Protocol filings, and also many registrations, via TDR.  The USPTO is in the process of converting all remaining registrations into a digital format, to permit future TDR access.  This conversion process is expected to take several years.

 

Downloads are converted into PDF format and may be viewed with any PDF viewer, including the free Adobe Reader.

 

If you need information regarding the application process or applying for a Trademark, please access other resources on the Trademark Web page such as: Frequently-Asked Questions or Basic Facts about Trademarks.  More detailed information is available in the Trademark Manual of Examining Procedure and the Acceptable Identification of Goods and Services Manual. 

 

Applicants should note that they may now file changes of correspondence address via a new form on TEAS.   Address changes may be performed on up to 20 cases at a time.  The Trademark Office strongly encourages applicants to use this time-saving form that is available online at: http://eteas.gov.uspto.report/V2.0/ca200/WIZARD.htm

 

To submit a fax response to this Office action after that date, send your response to the Law Office fax number, namely (571) 273-9103.

 

If the applicant has any questions or needs assistance in responding to this Office action, please email the assigned examining attorney.

 

 

/Ronald E. Aikens/

Trademark Attorney, Law Off. 103

(571) 272-9268 (wk)

(571) 273-9268 (fax)(not for Official resp.)

Ron.Aikens@USPTO.gov

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond formally using the Office’s Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://www.gov.uspto.report/teas/index.html and follow the instructions, but if the Office Action has been issued via email, you must wait 72 hours after receipt of the Office Action to respond via TEAS).
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above and include the serial number, law office number and examining attorney’s name in your response.

 

STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.