Offc Action Outgoing

RESPONSE TIME LIMIT: TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE.

Serial Number 76/403416

This letter responds to the applicant’s communication filed on November 8, 2004.

Specimen

On May 4, 2004, the Examining Attorney informed the Applicant that the specimen submitted with the Statement of Use was not a substantially exact representation of the drawing. The mark as depicted in the drawing appears as MANTIS. The specimen shows the mark as MANTIS READER. Therefore, Applicant was requested to either submit a new drawing depicting the mark as shown on the specimen and disclaiming the wording “reader,” or, in the alternative, submit a new specimen that agreed with the drawing.

On November 8, 2004, Applicant responded by arguing that MANTIS READER was not a material alteration of the drawing.

The Examining Attorney points out that in an application filed under §1(b) of the Act, the drawing of the mark must be a substantially exact representation of the mark as intended to be used on or in connection with the goods or services, and as actually used as shown by the specimen filed with the amendment to allege use or statement of use. 37 C.F.R. §§2.51(b) and 2.72(b)(1). TMEP Section 807.12(a).

In this case, MANTIS READER is not a substantially exact representation of MANTIS because READER is descriptive. See TMEP Section 1213.03. By the same token, amending the mark to MANTIS READER is not a material alteration of the drawing because it does not alter the essence or character of the mark. 37 C.F.R. §2.72; TMEP §§807.14 et seq. See In re Who? Vision Systems, Inc., 57 USPQ2d 1211 (TTAB 2000) (amendment from TACILESENSE to TACTILESENSE found to be material alteration); In re CTB Inc., 52 USPQ2d 1471 (TTAB 1999) (proposed amendment of “TURBO AND DESIGN” to typed word “TURBO” is material alteration); In re Meditech International Corp., 25 USPQ2d 1159, 1160 (TTAB 1990) (“[a] drawing consisting of a single blue star, as well as a drawing consisting of a number of blue stars, would both be considered material alterations vis-à-vis a drawing consisting of the typed words ‘DESIGN OF BLUE STAR’”); In re Wine Society of America Inc., 12 USPQ2d 1139 (TTAB 1989) (proposed amendment to replace typed drawing of “THE WINE SOCIETY OF AMERICA” with a special form drawing including those words with a crown design and a banner design bearing the words “IN VINO VERITAS” held to be a material alteration); In re Nationwide Industries Inc., 6 USPQ2d 1882 (TTAB 1988) (addition of house mark “SNAP” to product mark “RUST BUSTER” held a material alteration).

Therefore, 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. An acceptable declaration can be in the format as set out below:

The substitute specimen was in use in commerce prior to the expiration of the time allowed to applicant for filing a statement of use. 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.

_____________________________

(Signature)

_____________________________

(Print or Type Name and Position)

_____________________________

(Date)

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

If an amendment of the dates-of-use clause is necessary in order to state the correct dates of first use, then applicant must verify the amendment with an affidavit or a signed declaration in accordance with 37 C.F.R. §2.20. 37 C.F.R. §2.71(c).

The requirement to submit a new drawing of the mark that agrees with the specimen or submit a substitute specimen that shows use of the mark shown in the drawing is MAINTAINED and made FINAL herein.

Disclaimer

If Applicant amends the drawing to MANTIS READER, the applicant must disclaim the descriptive wording "READER" apart from the mark as shown. Trademark Act Section 6, 15 U.S.C. Section 1056; TMEP sections 1213 and 1213.02(a). The wording is merely descriptive because it identifies the nature of the goods.

A properly worded disclaimer should read as follows:

No claim is made to the exclusive right to use READER apart from the mark as shown.

The requirement to enter a disclaimer as applicable is MAINTAINED and made FINAL herein.

Options

Please note that the only appropriate responses to a final action are either (1) compliance with the outstanding requirements, if feasible, or (2) filing of an appeal to the Trademark Trial and Appeal Board. 37 C.F.R. Section 2.64(a). 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. Section 2.65(a).

Caroline F. Weimer

Trademark Lawyer

Law Office 115

571-272-9237 (T)

571-272-9327 (F)

HOW TO RESPOND TO THIS OFFICE ACTION:

ONLINE RESPONSE: You may respond formally using the Office’s Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://www.gov.uspto.report/teas/index.html and follow the instructions, but if the Office Action has been issued via email, you must wait 72 hours after receipt of the Office Action to respond via TEAS).
REGULAR MAIL RESPONSE: To respond by regular mail, your response should be sent to the mailing return address above and include the serial number, law office number and examining attorney’s name in your response.

STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.