Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

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

 

This letter responds to the applicant's communication filed on July 13, 2006.

The applicant has responded to the issues regarding the specimens of use. This response has been made of record.

Despite the aforementioned responses, the examining attorney has determined that the following issue remains outstanding and the requirement for correction is hereby made FINAL:

Final Refusal – Specimens Fail to Show Use for Goods

The examining attorney refuses registration on the Principal Register because the specimens fail to show use of the mark in connection with the goods as amended by the applicant.  Trademark Examining Procedure sections 905.05 and 905.07.

The examining attorney has reviewed the substitute specimen carefully but has found it unacceptable.  For the reasons below, the refusal pursuant to TMEP sections 905.05 and 905.07 is made FINAL.

The specimen is unacceptable as evidence of actual trademark use because the applicant clearly amended its goods to reference a remote control unit, despite the fact that the examining attorney offered to have the identification be amended to read that it was a watch with remote control features. Here, the specimen displays a watch with remote control features. The specimen advertises that it is a watch with remote control feature. Nevertheless, the applicant claims the goods are only remote controls and sought protection only for remote controls. Consequently, the specimen of use fails to show use of the mark with the goods for which the applicant sought protection. The examining attorney notes that the applicant declined the opportunity to send a specimen wherein the main text is in English or to submit an English translation of the text contained in the submitted specimen. The examining attorney includes attached hereto an advertisement for the applicant’s goods wherein the text is in English. Clearly the goods are advertised as a watch with remote control features. The examining attorney directs the applicant’s attention to the following text contained therein:

 

The Midas watch is powered by the Universal Electronics universal remote control technology and database . . . The watch movement is from Seiko.

 

This gadget wrist watch is of course sold by the prime store for anything gadget: ThinkGeek. You can buy the Midas Remote Control Wrist Watch for $29.99.

 

The applicant must submit a specimen showing the mark as used in commerce.  37 C.F.R. Section 2.56. Examples of acceptable specimens are tags, labels, instruction manuals, containers or photographs that show the mark on the goods or packaging.  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.

For the foregoing reasons, the refusal pursuant to TMEP Sections 905.05 and 905.07 is maintained and made FINAL.

 

Proper Response to Final Action

If applicant fails to respond to this final action within six months of the mailing date, the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond to this final action by: 

submitting a response that fully satisfies all outstanding requirements, if feasible (37 C.F.R. §2.64(a)); and/or

filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class (37 C.F.R. §§2.6(a)(18) and 2.64(a); TMEP §§715.01 and 1501 et seq.; TBMP Chapter 1200).

In certain circumstances, a petition to the Director may be filed to review a final action that is limited to procedural issues, pursuant to 37 C.F.R. §2.63(b)(2).  37 C.F.R. §2.64(a).  See 37 C.F.R. §2.146(b), TMEP §1704, and TBMP Chapter 1201.05 for an explanation of petitionable matter.  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

 

 

/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 using the Office’s Trademark Electronic Application System (TEAS) Response to Office action form available on our website at http://www.gov.uspto.report/teas/index.html.  If the Office action issued via e-mail, you must wait 72 hours after receipt of the Office action to respond via TEAS.  NOTE:  Do not respond by e-mail.  THE USPTO WILL NOT ACCEPT AN E-MAILED RESPONSE.
• 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.  NOTE:  The filing date of the response will be the date of receipt in the Office, not the postmarked date.  To ensure your response is timely, use a certificate of mailing.  37 C.F.R. §2.197.

 

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.