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  76/399154

 

The assigned trademark examining attorney has reviewed the statement of use filed on February 12, 2004, and has determined the following.

 

Mark Differs on Drawing and Specimen

 

The mark as depicted on the drawing disagrees with the mark as it appears on the specimen, and clarification is required.  Applicant must submit a substitute specimen that shows use of the mark as it appears on the drawing and include 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. §§2.51, 2.59(b) and 2.72(b); TMEP §§807.14 and 904.09

 

In the present case, the drawing displays the mark as “AVON”, and the specimen shows the mark as “AVON PATELLO”.  Applicant may not amend the drawing to conform to the display on the specimen because the essence or character of the mark would be materially altered, i.e., the mark on the specimen creates a different commercial impression from the mark on the drawing.  37 C.F.R. §2.72(b); TMEP §§807.14, 807.14(a) and 807.14(a)(i).  In addition, applicant may not withdraw the statement of use.  37 CFR §2.88(g).

 

Proper Declaration

 

The following is a properly worded declaration under 37 C.F.R. §2.20.  At the end of the response, the applicant should insert the declaration signed by a person authorized to sign under 37 C.F.R. §2.33(a).

 

The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. 1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; 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; and that 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 declaration is filed electronically through TEAS, then applicant should sign the declaration by entering a “symbol” that applicant has adopted as a signature (e.g., /john doe/, /drl/, and /544-4925/).  The Office will accept any combination of letters, numbers, spaces and/or punctuation marks as a valid signature if it is placed between two forward slash (“/”) symbols.  37 C.F.R. §§ 2.33(d) and 2.193(c)(1)(iii); TMEP §§304.08 and 804.05.

 

Status Line

 

The Trademark Applications and Registrations Retrieval (TARR) database on the USPTO website at http://tarr.uspto.gov provides detailed, up to the minute information about the status and prosecution history of trademark applications and registrations.  The TARR database is available 24 hours a day, 7 days a week.  Status and status date information is also available via push-button telephone at (703) 305‑8747 from 6:30 a.m. until midnight, Eastern Time, Monday through Friday. 

 

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

 

 

/Alec Powers/

Trademark Examining Attorney

US Patent and Trademark Office

Law Office 105

Phone: 703-308-9105 x 187

Fax: 703-872-9825

 

 

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 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.