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  76/362742

 

This letter responds to the applicant’s communication filed on February 25, 2003 in which the applicant 1) amended the identification and 2) indicated dates of use in commerce.  Item 1 is acceptable and the amended recitation of services and classification change have been entered.   The applicant’s raises the following new issues, and the requirement for an acceptable drawing is maintained and continued.

 

NEW ISSUES

 

AMENDMENT TO ALLEGE USE

 

In its response, the applicant has asserted that “[t]he applicant is using the mark in commerce, or the applicant’s related computer or licensee is using the mark in commerce, or the applicant’s predecessor in interest used the mark in commerce, on or in connection with the identified goods and/or services.  15 U.S.C. Section 1051(a), as amended.  The mark was first used on 07/25/2002 and first used in commerce on 07/25/2002, and it now in use in such commerce.”  See response p. 1.

 

It appears from this statement that the applicant is attempting to assert an amendment to allege use, but the applicant has not met the minimum filing requirements for such an amendment.  An amendment to allege use must include the following minimum elements to be referred to the examining attorney for examination on the merits:

(1) the prescribed fee for at least one class;

(2) one specimen or facsimile of the mark as used in commerce; and

(3) a verification or declaration signed by the applicant stating that the mark is in use in commerce.

37 C.F.R. §2.76(e).  See TMEP section 1104.01.

 

The applicant has provided a signed declaration attesting to the fact that the mark is in use in commerce, but the applicant has not provided the prescribed fee or a specimen of use.  The applicant must file an acceptable Amendment to Allege Use before the basis can be changed from Section 1(b), intent-to-use, to Section 1(a), use-based.

 

The Amendment to Allege Use form can be accessed online through the Trademark Electronic Application System at  http://www.gov.uspto.report/teas/index.html .  The form is a PRE-registration form called the Allegation of Use/Statement of Use form.  The ETEAS system should be used if the applicant wishes to submit the form electronically, the PRINTEAS system should be used if the applicant simply wishes to print out the form and mail it in.

 

DISCLAIMER

 

The applicant must insert a disclaimer of “CO.” in the application.  Trademark Act Section 6, 15 U.S.C. §1056; TMEP §1213.  Words or abbreviations in a trade name designating the legal character of an entity (e.g., Corporation, Corp., Co., Inc., Ltd., etc.) must be disclaimed because an entity designation has no source-indicating capacity.  In re Packaging Specialists, Inc., 221 USPQ 917, 919 (TTAB 1984) ("the element 'INC.' [in PACKAGING SPECIALISTS, INC.] being recognized, in trademark evaluation, to have no source indication or distinguishing capacity").  TMEP section 1213.03(d).  The word “CO.” is an entity designation and must be disclaimed.

 

The computerized printing format for the Trademark Official Gazette requires a standard form for a disclaimer.   TMEP §1213.08(a)(i).  A properly worded disclaimer should read as follows:

 

No claim is made to the exclusive right to use “CO.” apart from the mark as shown.

 

See In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).

 

A disclaimer does not remove the disclaimed matter from the mark.  It is simply a statement that the applicant does not claim exclusive rights in the disclaimed wording or design apart from the mark as shown in the drawing.

 

CONTINUED REQUIREMENT

 

DRAWING

 

As indicated in the last office action, the applicant’s drawing amendment submitted on May 21, 2003 was unacceptable.  The original drawing of the mark stands.  The original drawing remains unacceptable because it does not meet the requirements set forth in 37 C.F.R. §2.52.  The mark does not meet the size requirements because it exceeds 4 inches in width.  The applicant must submit a new drawing showing the mark clearly and conforming to 37 C.F.R. §2.52.  TMEP §807.07(a).

 

The requirements for a special‑form drawing are as follows:

 

(1) The drawing must appear in black and white; no color is permitted.

 

(2)  Every line and letter must be black and clear.

 

(3)  The use of gray to indicate shading is unacceptable.

 

(4)  The lining must not be too fine or too close together.

 

(5)  The preferred size of the area in which the mark is displayed is 2½ inches (6.1 cm.) high and 2½ inches (6.1 cm.) wide.  It should not be larger than 4 inches (10.3 cm.) high or 4 inches (10.3 cm.) wide.

 

(6)  If the reduction of the mark to the required size renders any details illegible, the applicant may insert a statement in the application to describe the mark and these details.

 

37 C.F.R. §2.52; TMEP §§807.01(b) and 807.07(a).  The Office will enforce these drawing requirements strictly. 

 

The Office prefers that the drawing be depicted on a separate sheet of smooth, nonshiny, white paper 8 to 8½ inches (20.3 to 21.6 cm.) wide and 11 inches (27.9 cm.) long, and that the sheet contain a heading listing, on separate lines, the applicant’s complete name; the applicant’s address; the goods or services recited in the application; and, if the application is filed under Section 1(a) of the Act, the dates of first use of the mark and of first use of the mark in commerce; or, if the application is filed under Section 44(d), the priority filing date of the foreign application.  37 C.F.R. §2.52(b); TMEP §§807.01(a), 807.01(b), 807.01(c) and 807.07(a).

 

PLEASE NOTE:  In the last office action, the examining attorney indicated that the applicant would be able to amend the mark to a typed drawing, but this is not possible.  The applicant cannot amend the original drawing of the mark without materially altering the character of the mark.  (See attached drawing).   Therefore, the applicant must submit a new drawing containing the mark in the stylization originally shown, but meeting the size requirements under 37 C.F.R. §2.52.

 

NOTE REGARDING STATUS OF APPLICATION

 

Current status and status date information is available on-line at http://tarr.gov.uspto.report/ or, 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.

 

PLEASE NOTE:  Because it delays processing, submission of duplicate papers is discouraged.  Unless specifically requested to do so by the Office, parties should not mail follow up copies of documents transmitted by fax or email.  306; Cf.  ITC Entertainment Group Ltd. V. Nintendo of America Inc. 45 USPQ2d 2021 (TTAB 1998).

 

The following authorities govern the processing of trademark applications:

§         The Trademark Act, 15 U.S.C. Section 1051 et seq.;

§         Trademark Rules of Practice, 37 C.F.R. Part 2;

§         Trademark Manual of Examining Procedure (TMEP).

To access these resources, please see http://www.gov.uspto.report/web/offices/tac/.

 

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

 

 

/Barbara Brown/

Trademark Attorney, LO 116

TEL (703) 306-7924

FAX (703) 746-8116

barbara.t.brown@uspto.gov (informal)

ecom116@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.