UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/429286
APPLICANT: BNG Enterprises, Inc.
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CORRESPONDENT ADDRESS: DENNIS H. CAVANAUGH, ESQ. ULLMAN, SHAPIRO & ULLMAN, LLP 299 BROADWAY, SUITE 1700 NEW YORK, NEW YORK 10007
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom105@uspto.gov
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MARK: HERBAL CLEAN THE FIXX DIETARY SUPPLEMENT ETC.
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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 76/429286
This letter responds to the applicant’s communication filed on 4/30/03.
The claim of ownership of the prior registration is acceptable.
The applicant was required to submit a new specimen showing use of the mark as it appears on the drawing. The applicant did not submit this specimen and therefore the requirement is maintained and made FINAL. 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 at least as early as the filing date of the application. 37 C.F.R. §§2.59(a) and 2.72(a); TMEP §904.09.
The proposed amendment of the drawing is unacceptable because it would materially alter the character of the mark. 37 C.F.R. §2.72; TMEP §§807.14, 807.14(a) and 807.14(a)(i). See In re Wine Society of America, Inc., 12 USPQ2d 1139 (TTAB 1989); In re Nationwide Industries Inc., 6 USPQ2d 1883 (TTAB 1988); In re Pierce Foods Corp., 230 USPQ 307 (TTAB 1986). This proposed amendment does not create a new issue in this case because the first Office Action indicated that such an amendment would be deemed a material alteration. The applicant has argued that the amendment should be permissible because the portions of the proposed mark that the applicant seeks to delete are previously registered. The examining attorney respectfully disagrees and notes that TMEP Section 807.14(a) specifically states that:
The question of whether a proposed amendment to delete previously registered matter from a mark is a material alteration should be determined without regard to whether the matter to be deleted is the subject of an existing registration.
The controlling question with regard to proposed amendments of marks is whether the old and new forms of the mark create essentially the same commercial impression. Clearly in this case, the old form of the mark, HERBAL CLEAN THE FIXX DIETARY SUPPLEMET 2 OZ MOUTHWASH SWISH-N-SPIT, does not create the same commercial impression as the proposed new form of the mark, 2 OZ MOUTHWASH SWISH-N-SPIT.
The disclaimer requirement set forth in the first Office Action dated 10/31/02 is maintained and made FINAL.
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).
/Ronald McMorrow/
Examining Attorney
Law Office 105
(703) 308-9105 ext. 136
(703) 872-9825
ecom105@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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.