Offc Action Outgoing

This responds to applicant’s communication dated February 1, 2008, wherein applicant submitted substitute specimens for goods in Classes 16 and 24. The specimen for Class 16 is acceptable. For the reasons set forth below, the requirement for an acceptable specimen of use for Class 24 is continued:

SPECIMEN OF USE FOR CLASS 24 IS UNACCEPTABLE

The specimen is not acceptable because it does not show the applied-for mark in use in commerce. A statement of use must include a specimen showing the applied-for mark in use in commerce for each class of goods. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.56, 2.88(b)(2); TMEP §§904, 940.07(a), 1109.09(b).

The specimen is not acceptable as evidence of actual trademark use because it does not depict use of the mark for any of the identified Class 24 goods. In this case, the identified goods in Class 24 comprise “products for medical use, namely, disposable non-woven washcloths of synthetic material; medical and surgical products and supplies, namely, pressure relief bed pads.” However, the specimen shows use of the mark for mattresses, which are classified in Class 10 or 20, depending on their medical or non-medical nature. Thus it fails to show proper use on the goods or on packaging of the goods.

Please note that the requirement for an acceptable specimen for Class 24 is reissued as “non-final” because the specimen appears to be a permanent form of the previously offered specimen. Although the examiner refused the initial specimen on the ground that it appeared temporary in nature, no advisory was given that the specimen also appeared potential unacceptable for the above referenced reason. The examiner apologizes for any inconvenience arising from this oversight.

Applicant may respond to this refusal by submitting the following:

(1) A substitute specimen showing the mark in use in commerce for each class of goods specified in the statement of use; and

(2) The following statement, verified with an affidavit or a signed declaration under 37 C.F.R. §2.20: “The substitute specimen was in use in commerce prior to the expiration of the time allowed applicant for filing a statement of use.” 37 C.F.R. §2.59(b)(2); TMEP §904.05. If submitting a specimen requires an amendment to the dates of use, applicant must also verify the amended dates. 37 C.F.R. §2.71(c).

Examples of specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the goods or packaging, or displays associated with the goods at their point of sale. TMEP §§904.03 et seq.

Pending a proper response, registration is refused because the specimen does not show the applied-for mark in use in commerce as a trademark. 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.56, 2.88; TMEP §§904, 904.07(a), 1109.09(b).

Applicant may not withdraw the statement of use. 37 C.F.R. §2.88(g); TMEP §1109.17.

The following is a sample declaration under 37 C.F.R. §2.20 with a supporting statement for a substitute specimen:

The undersigned being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements and the like may jeopardize the validity of the application or document or any registration resulting there from, declares that the substitute specimen was in use in commerce prior to the expiration of the time allowed applicant for filing a statement of use; all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.

_____________________________

(Signature)

_____________________________

(Print or Type Name and Position)

_____________________________

(Date)

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

/SMP/

Steven M. Perez

Trademark Attorney

Law Office 101

(571) 272-5888

steven.perez@uspto.gov

RESPOND TO THIS ACTION: If there are any questions about the Office action, please contact the assigned examining attorney. A response to this Office action should be filed using the form available at http://www.gov.uspto.report/teas/eTEASpageD.htm. If notification of this Office action was received via e-mail, no response using this form may be filed for 72 hours after receipt of the notification. Do not attempt to respond by e-mail as the USPTO does not accept e-mailed responses.

If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response. Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.

STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov. When conducting an online status check, print and maintain a copy of the complete TARR screen. If the status of your application has not changed for more than six months, please contact the assigned examining attorney.