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.

MAILING/E-MAILING DATE INFORMATION: If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.

Serial Number 76/430925

This letter responds to applicant’s communication filed on January 12, 2007.

The receipt of the statement of use gives rise to the following new issues. Please note that the specimen for International Class 24 is acceptable.

Ownership Inquiry

The owner identified in the application at the time of filing and in the notice of allowance is “Wells Fargo Retail Finance II, LLC.” However, the party who filed the statement of use is identified as “Delia’s Group, Inc.” No ownership transfer documents have been filed or recorded with the Assignment Services Division of the USPTO. The party who files a statement of use must be the owner of the mark at the time the statement of use is filed. TMEP §1109.10. Therefore, the statement of use cannot be accepted because it appears to have been submitted by an improper party. 15 U.S.C. §1051(d); 37 C.F.R. 2.88.

If the party filing the statement of use is the owner, this party must submit evidence to establish that it has clear chain of title. Evidence to establish ownership can be provided after the expiration of the deadline for filing the statement of use. See 37 C.F.R. §§3.71 and 3.73; TMEP §1109.10. To establish ownership, the new owner must:

(1) Record an assignment or other document of title with the Assignment Services Division showing clear chain of title to the party filing the statement of use, and promptly notify the examining attorney that such documentation has been recorded; or

(2) Submit evidence of ownership, in the form of a document transferring ownership from one party to another, or an explanation, in the form of an affidavit or signed declaration under 37 C.F.R. §2.20, that a valid transfer of legal title occurred prior to filing the statement of use. 37 C.F.R. §3.73(b)(1); TMEP §502.

If the party who filed the statement of use was not the owner of the mark at the time of that filing, the true owner may not file a substitute statement of use unless there is time remaining in the statutory period for filing a statement of use. In re Colombo Inc., 33 USPQ2d 1530 (Comm’r Pats. 1994). The time for filing a substitute statement of use expires on July 13, 2007. If no time remains in the statutory period for filing the statement of use, registration is refused because no acceptable statement of use was filed by the applicant within the time permitted. 15 U.S.C. §1051(d); 37 C.F.R. 2.88.

In order to record an assignment of a trademark or service mark with the Office, applicant must submit the assignment documents along with a cover sheet and the required fees. The Office will accept for recording an original document, a copy of an original document, a copy of an extract from the document evidencing the effect on title, or a statement signed by both the party conveying the interest and the party receiving the interest explaining how the conveyance affects title. 37 C.F.R. §3.25.

The fee for recording a trademark assignment is $40.00 for the first mark in a document and $25.00 for second and subsequent marks in the same document. 37 C.F.R. §2.6(b)(6). Each document submitted for recording must be accompanied by a properly completed cover sheet. 37 C.F.R. §§3.28 and 3.31.

Requests to record documents in the Assignment Services Division can be filed electronically at http://etas.gov.uspto.report/.

Specimen for International Class 25

The mark depicted on the drawing disagrees with the mark on the specimen for International Class 25. The mark on the drawing page must be a substantially exact representation of the mark that appears on the specimen. 37 C.F.R. §2.51.

In this case, the drawing displays the mark as DELIA with a daisy design used for the dot on the “i”, while the specimen shows the mark as DELIA’S with a daisy design used in place of the apostrophe.

Therefore, applicant must submit one of the following:

(1) A new drawing of the mark that agrees with the mark on the specimen but does not materially alter the original mark. 37 C.F.R. §2.72(b); TMEP §§807.13, 807.13(a) and 807.14 et seq.; or

(2) A substitute specimen showing the mark as it appears on the drawing, and the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “The substitute specimen was in use in commerce prior to the expiration of the time allowed applicant for filing a statement of use.” 37 C.F.R. §2.59(b)(2); TMEP §904.09. If submitting a specimen requires an amendment to the dates of use, applicant must also verify the amended dates. 37 C.F.R. §2.71(c).

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

If applicant submits a new drawing, applicant must also submit a new specimen for International Class 24 showing the mark DELIA’S with a daisy for the apostrophe used for bed sheets.

Declaration for Substitute Specimen

The following is a sample declaration under 37 C.F.R. §2.20 with a supporting statement for a substitute specimen:

The undersigned being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements and the like may jeopardize the validity of the application or document or any registration resulting there from, declares that the substitute specimen was in use in commerce at least as early as the filing date of the application; 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 applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at the number below.

/Jeri Fickes/

Trademark Examining Attorney

Law Office 107

571/272-9157

571/273-9107 fax

NOTICE OF NEW PROCEDURE FOR E-MAILED OFFICE ACTIONS: In late spring 2007, for any applicant who authorizes e-mail communication with the USPTO, the USPTO will no longer directly e-mail the actual Office action to the applicant. Instead, upon issuance of an Office action, the USPTO will e-mail the applicant a notice with a link/web address to access the Office action using Trademark Document Retrieval (TDR), which is located on the USPTO website at http://portal.gov.uspto.report/external/portal/tow. The Office action will not be attached to the e-mail notice. Upon receipt of the notice, the applicant can then view and print the actual Office action and any evidentiary attachments using the provided link/web address. TDR is available 24 hours a day, seven days a week, including holidays and weekends. This new process is intended to eliminate problems associated with e-mailed Office actions that contain numerous attachments.

HOW TO RESPOND TO THIS OFFICE ACTION:

ONLINE RESPONSE: You may respond using the Office’s Trademark Electronic Application System (TEAS) Response to Office action form available on our website at http://www.gov.uspto.report/teas/index.html. If the Office action issued via e-mail, you must wait 72 hours after receipt of the Office action to respond via TEAS. NOTE: Do not respond by e-mail. THE USPTO WILL NOT ACCEPT AN E-MAILED RESPONSE.
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. NOTE: The filing date of the response will be the date of receipt in the Office, not the postmarked date. To ensure your response is timely, use a certificate of mailing. 37 C.F.R. §2.197.

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.