UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/436588
APPLICANT: Porter-Cable Corporation
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: QUIK-CHANGE
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CORRESPONDENT’S REFERENCE/DOCKET NO: 5809.152-US-
CORRESPONDENT EMAIL ADDRESS: |
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 76/436588
The assigned examining attorney has reviewed the statement of use filed on July 27, 2004 and has determined the following:
1. Refusal Under Section 1 – Statement of Use not Filed by Owner of the Mark
The examining attorney refuses registration because the company that filed the statement of use is not the owner of the mark. Trademark Act Section 1, 15 U.S.C. §1051. The party filing the statement of use must be the owner of the mark at the time of filing. TMEP §1109.10. In this case, the notice of allowance was issued to Porter-Cable Corporation. However, the statement of use was filed by Delta International Machinery Corporation. Office records do not show that an assignment has been recorded for this application.
If the party filing the statement of use is the owner at the time of filing but the records of the Office show title in another party, the applicant must submit evidence to establish chain of title. If the party who filed the statement of use was the owner at the time of filing, evidence to establish ownership can be provided after expiration of the deadline for filing the statement of use. See 37 C.F.R. §§3.71 and 3.73; TMEP §502. To establish ownership, the new owner must either: (1) record an assignment or other document of title with the Assignment Services Division, and notify the Trademark Operation that the document has been recorded, specifying the reel and frame number at which the document is recorded; or (2) submit other 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 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.
The applicant is advised that the certificate of registration may be issued to the assignee of the applicant, or in a new name of the applicant, upon written request. TMEP §502.01. However, the appropriate document or documents (e.g., assignment document, change of name certificate, etc.) must be made of record in the Assignment Division. Id. The assignee's address must be made of record in the application file. 37 C.F.R. §3.85. The applicant/assignee bears the burden of recording and notifying appropriate Office personnel of assignments or changes of name to ensure that the registration issues in the name of a new owner. TMEP §502.01.
2. Specimen
The applicant must submit one clear specimen or facsimile showing the mark as it is used in commerce. The current specimen of record is unacceptable because it is so dark that the examining attorney is unable to determine whether the mark as shown on the specimen matches the mark as shown on the drawing page, or whether the specimen shows the use of the mark on the goods identified in the application.
If the applicant submits a clear version of the same specimen originally filed, then no additional verification need be submitted. However, if the clear specimen or facsimile is of a different type than that originally submitted, then the new specimen constitutes a substitute specimen. In that case, applicant must also submit a statement that “the substitute specimen was in use in commerce prior to the expiration of the time allowed 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)(2); TMEP §§904.09 and 1109.09(b).
A prompt response to this Office action will expedite the handling of this matter.
NOTICE: TRADEMARK OPERATION RELOCATING OCTOBER AND NOVEMBER 2004
The Trademark Operation is relocating to Alexandria, Virginia, in October and November 2004. Effective October 4, 2004, all Trademark-related paper mail (except documents sent to the Assignment Services Division for recordation, certain documents filed under the Madrid Protocol, and requests for copies of trademark documents) must be sent to:
Commissioner for Trademarks
P.O. Box 1451
Alexandria, VA 22313-1451
Applicants, registration owners, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at www.uspto.gov.
/Barbara A. Gaynor/
Trademark Examining Attorney
Law Office 115
(571) 272-9164
How to respond to this Office Action:
You may respond formally using the Office's Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://eteas.gov.uspto.report/V2.0/oa242/WIZARD.htm and follow the instructions therein, but you must wait until at least 72 hours after receipt if the office action issued via e-mail). PLEASE NOTE: Responses to Office Actions on applications filed under the Madrid Protocol (Section 66(a)) CANNOT currently be filed via TEAS.
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.