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  76/387328

 

The assigned examining attorney has reviewed the statement of use filed on June 3, 2003 and has determined the following.

 

DRAWING/ SPECIMEN AGREEMENT

 

The drawing displays the mark as NRT.  However, this differs from the display of the mark on the specimen, where it appears as H7 NRT BOTT S/O.  The applicant cannot amend the drawing to conform to the display on the specimen because the character of the mark would be materially altered.  37 C.F.R. §2.72(b); TMEP §§807.14, 807.14(a) and 807.14(a)(i).

 

Therefore, the applicant must submit a substitute specimen that shows use of the mark as it appears on the drawing.  37 C.F.R. §2.51; TMEP §807.14.  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 prior to the expiration of the time allowed to the applicant for filing a statement of use.  37 C.F.R. §§2.59(b) and 2.72(b); TMEP §904.09.

 

Alternatively, applicant may attempt to show by way of argument that the other matter on the specimens has clear significance apart from that of trademark such that NRT may function as a trademark separate from the other matter appearing with it.  See In re Raychem Corp., 12 USPQ2d 1399 (TTAB 1989) (TINEL-LOCK found to be substantially exact representation of mark TRO6AI-TINEL-LOCK-RING because TRO6AI was a stock number and RING was the name of the goods).

 

Please feel free to contact the undersigned attorney if you wish to discuss this application.

 

 

 

/John S. Yard/

Trademark Examining Attorney

Law Office 115

(703) 308-9115 x209

ecom115@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.