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  76/363701                                                                   MARK:  BIOFLEX

 

This letter responds to the applicant's communication filed on March 28, 2002.

In the applicant’s response, the applicant  responded to the refusal  issued concerning the specimen submitted in support of the applicant’s Statement of Use.  After careful consideration of the applicant’s response the prior refusal is continued maintained and the additional refusal is made.

SPECIMEN OF RECORD IS UNACCEPTABLE – REFUSAL CONTINUED AND MAINTAINED

The applicant has applied to u se the mark “BIOFlEX.” The applicant has submitted a specimen that shows the mark “BIOBLEX RC.”  Notably, the specimen does not show use of the mark in connection with any of the specified goods.  The applicant has responded to the refusal by arguing that the “RC” in the applicant’s  specimen is used to indicate “different grades” of the applicant’s product.  The applicant, however, has not provided any evidence that this is so.   The applicant has made reference to two cases, In Re Clarirol Incoroporated,  59 C.C.P.A. 918; 457 F.2d 509, 1972 CCPA Lexis 351 173 U.S.P.Q. (BNA) 355. and In re Servel Inc., 37 C.C.P.A. 977; 181 F.2d 192; 1950 CCP Lexis 80; 85 U.S.P.Q. (BNA) 1950 as supporting precedence that the applicant’s specimen is satisfactory.  The applicant case, however, is clearly distinguished from these cases in on much aspect, but what is most compelling is that the applicant has provided insufficient evidence to show that the applicant’s use of the “RC” in the mark is indeed used as a qualifying distinction for the grade of goods.   As the record in the Clairol case will reflect, the applicant in that case “ jading from the numerous other specimens of labels, advertisements, etc.  submitted as exhibits by the applicant…..”  In the Servel case, the applicant in that case also provided numerous specimens, which showed that the applicant used in the mark and other terms in connection with the specified goods.  In fact the record of that case reflects, “[a]pplicant subsequently files specimens of tread-marks issued to appellant for other publications in Class 38 showing use of the word “Servel”, such as “The Servel Salesman, Servel News, and Server Refrigograms.” See Serval, 37 C.C.P.A. 977; 181 F.2d 192; 1950 CCP Lexis 80; 85 U.S.P.Q. (BNA) 1950, page 1.  Here, the applicant has not only provided a tag with the wording “BIOFlEX RC” imposed on it, showing no relationship to the specified goods, nor has the applicant provided any other supporting evidence showing that the applicant does indeed use the mark “BIOFLEX” in conjunction with any other designations on the specified goods.   Accordingly, the applicant’ claim that the “RC” is the mark is used as a grade designation is unsupported in the record and the refusal is continued and made final. 

 

NEW ISSUE

 

SPECIMEN DOES NOT SHOW USE OF THE MARK WITH THE SPECIFIED GOODS

The specimen does not show use of the mark for any goods/services identified in the amendment to allege use, namely, “non metallic hose pipes.”  The applicant must submit a specimen showing use of the mark for the goods/services specified.  37 C.F.R. §§2.56 and 2.76(b)(2); TMEP §1104.09(e). 

The applicant must submit a specimen showing the mark as used in commerce.  37 C.F.R. §2.56.  Examples of acceptable specimens are tags, labels, instruction manuals, containers or photographs that show the mark on the goods or packaging.  TMEP §904.04 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.  Jim Dandy Co. v. Siler City Mills, Inc., 209 USPQ 764 (TTAB 1981); 37 C.F.R. §2.59(a); TMEP §904.09.

 

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. §2.20.  37 C.F.R. §2.71(c); TMEP §§903.05 and 1104.09(d).

 

APPLICATION FEE INCREASE  - ADVISORY ONLY

Effective January 1, 2003, the fee for filing a trademark application is $335 for each class.  This applies to classes added to pending applications as well as to new applications filed on or after that date.  37 C.F.R. §2.6(a)(1). 

 

APPLICANT’S OPTIONS

Please note that the only appropriate responses to a final action are (1) compliance with the outstanding requirements, if feasible, (2) filing of an appeal to the Trademark Trial and Appeal Board, or (3) filing of a petition to the Director if permitted by 37 C.F.R. §2.63(b). 37 C.F.R. §2.64(a); TMEP §715.01.  Regarding petitions to the Director, see 37 C.F.R. §2.146 and TMEP Chapter 1700.  If the applicant fails to respond within six months of the mailing date of this refusal, this Office will declare the application abandoned.  37 C.F.R. §2.65(a). 

 

 

 

Georgia Ann Carty

/Georgia Ann Carty/

Trademark Attorney

Law Office 111

(703) 308-9111, Ext. 150

ecom 111 @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 SPECIFIC INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.