UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/399822
APPLICANT: Just Wheels & Tires Co.
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CORRESPONDENT ADDRESS: JEAN M. WRAITH, ESQ. JACKSON, DEMARCO & PECKENPAUGH 4 PARK PLAZA, 16TH FLOOR IRVINE, CALIFORNIA 92614
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3513 ecom104@uspto.gov
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MARK: REACTION
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
CORRESPONDENT EMAIL ADDRESS:
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Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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Serial Number 76/399822
This letter responds to the applicant’s January 31, 2002 communication with this Office. Following consideration of the submission, the examining attorney concludes as follows.
In the first action, the applicant was advised that its specimen was unacceptable because it failed to show the use of the mark on the goods. The applicant was required to submit a substitute specimen and the required declaration in support of the substitute specimen.
In response, the applicant signed and returned the declaration. However, the applicant has failed to provide a substitute specimen. Therefore, the refusal to register the mark based on the unacceptability of the specimen is repeated below and made final.
As noted, the specimen is unacceptable as evidence of actual trademark use because it failed to show the mark on the goods. 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.
Please note, if the specimen originally submitted by the applicant shows the use of the mark in the center of the wheel, it is too small to be discerned. The applicant must submit a larger, clear copy of the specimen showing the mark on the wheel if the applicant wishes to rely on the submitted specimen.
The applicant must verify, with an affidavit or a declaration under 37 C.F.R. §2.20, that any substitute specimen was in use in commerce at least as early as the filing date of the application. 37 C.F.R. §2.59(a); TMEP §904.09.
The statement supporting use of the substitute specimen must read as follows:
The substitute specimen was in use in commerce at least as early as the filing date of the application.
The applicant must sign this statement either in affidavit form or with a declaration under 37 C.F.R. §2.20; TMEP §904.09.
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 the facts set forth in this application are true; all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.
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(Signature)
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(Print or Type Name and Position)
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(Date)
How to respond to this Office Action:
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).
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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.
John T. Lincoski
Trademark Attorney
Law Office 104
(703)308-9104 ext. 261