Offc Action Outgoing

In an Office Action dated September 14, 2006, the examining attorney required applicant to (1) provide substitute specimens because the mark as it appears on the drawing page of the application did not match the mark as it appeared on the applicant’s specimens, and (2) clarify that the specimens are actual hang tags for the goods. 37 C.F.R. §2.51; TMEP §807.12. On April 16, 2007, a Notice of Abandonment was mailed to applicant because applicant failed to respond to the examining attorney’s September 14, 2006 Office Action. On June 14, 2007, applicant filed a Petition to Revive and a Response to Office Action. On June 14, 2007, a Notice of Revival was sent to the applicant. In its June 14, 2007 Response to Office Action, applicant provided a substitute specimen and stated that the substitute specimen is a scanned image of a hangtag.

This letter responds to applicant’s Response to Office Action. The examining attorney withdraws the requirement that applicant clarify that the specimen(s) is/are actual hangtags for the goods

The examining attorney has considered the applicant’s substitute specimen carefully but has found it unacceptable. For the reasons below, the requirement for a substitute specimen is continued, maintained, and made FINAL.

Mark Differs on Drawing and Specimens - FINAL

The mark as depicted on the drawing does not agree with the mark as it appears on the specimen, and clarification is required. 37 C.F.R. §2.51; TMEP §807.12. Specifically, the drawing displays the mark as both the words “ZEN” and “BEAR,” which are separated by a hyphen, and a depiction above the words of a panda bear, which is comprised of the following: a face outlined by a thin even line; two ears formed by solid black semi-circles with one break in each ear indicating fur; two arching eyebrows; a nose depicted by a wide solid black oval with a jagged white highlight on it and a thin arching line over the oval; two black eyes with pupils formed by two white semi-circular lines, and a closed mouth formed by a thin arched line.

In contrast to the drawing, applicant’s substitute specimen depicts the mark as both the words “ZEN” and “BEAR,” which are separated by a hyphen, and a depiction above the words of a panda bear, which is comprised of the following: a face outlined by an uneven thin line which is broken to indicate fur and which has protrusions to depict cheeks and a chin; two ears formed by solid black imperfect semi-circles neither of which has a break to indicate fur; no arching eyebrows; a nose depicted by a thin oval with a white oval highlight on it and no thin arching line over the oval nose; eyes with pupils formed by one white semi-circular line and a white pupil; and an open mouth with a tongue.

Applicant must either:

(1) submit a new drawing of the mark that agrees with the specimen but does not materially alter the mark; 37 C.F.R. §2.72(b); TMEP §§807.13, 807.13(a) and 807.14 et seq; or

(2) submit a substitute specimen that shows use of the mark shown in the drawing and includes a statement that “the substitute specimen was in use in commerce prior to the expiration of the time allowed to applicant for filing a statement of use,” verified with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20. 37 C.F.R. §§2.59(b) and 2.72(b); TMEP §904.09.

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

Special Form Drawing Through TEAS - Requirements

To submit a special-form drawing electronically via the Trademark Electronic Application System (TEAS), applicant must attach a digitized image of the mark to the communication. The requirements for an electronically submitted special-form drawing are as follows:

The digitized image must be in JPG format, formatted at no less than 300 dots per inch and no more than 350 dots per inch.

The Office recommends that the digitized image of the mark have a length and width of no smaller than 250 pixels and no larger than 944 pixels.

The drawing must appear in black and white if color is not claimed as a feature of the mark, or in color if color is claimed as a feature of the mark.

All lines in the image must be clean, sharp and solid, and not fine or crowded, and produce a high-quality image when copied.

37 C.F.R. §§2.52(b) and 2.53(c); TMEP §§807.04 et seq and 807.05(c).

Special Form Drawing on Paper – Requirements

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

The drawing must appear in black and white if color is not claimed as a feature of the mark, or in color if color is claimed as a feature of the mark.

Drawings must be made with a pen or by a process that will provide high definition when copied. A photolithographic, printer’s proof copy, or other high quality reproduction of the mark may be used. All lines must be clean, sharp and solid, and must not be fine or crowded.

The image must be no larger than 3.15 inches (8 cm) high by 3.15 inches (8 cm) wide.

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

37 C.F.R. §§2.52(b); TMEP §§807.04 et seq.

If submitted on paper, the Office prefers that the drawing be depicted on a separate sheet of non-shiny, white paper that is 8 to 8.5 inches wide and 11 to 11.69 inches long (20.3 to 21.6 cm. wide and 27.9 to 29.7 cm. long). One of the shorter sides of the sheet should be regarded as its top edge. In addition, the drawing should include the caption “DRAWING PAGE” at the top of the drawing beginning one-inch (2.5 cm) from the top edge. 37 C.F.R. §2.54; TMEP §§807.06 et seq.

The Office strictly enforces these drawing requirements.

Declaration for a Substitute Specimen

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 at least as early as the filing date of the application; 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)

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:

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

(2) 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 matters. The petition fee is $100. 37 C.F.R. §2.6(a)(15).

Response Guidelines

To expedite prosecution of this application, applicant is encouraged to file its response to this Office action through the Trademark Electronic Application System (TEAS), available at http://www.gov.uspto.report/teas/index.html.

If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at the number below.

/margaretpower/

Examining Attorney

Law Office 103

margaret.power@uspto.gov

Phone 571-270-1507

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 Office’s Response to Office action 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.