Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE. 

 

Serial Number  76/446471

 

 

This letter responds to the applicant’s communication filed on May 27, 2003.

 

The disclaimer of “POOL” is acceptable and of record.

 

IDENTIFICATION OF GOODS

 

The amended identification of goods is still unacceptable.  “Chemical products” is indefinite, and could include items in other classes.  The requirement for an acceptable identification of goods is continued and made FINAL.  Trademark Act Section 1.  The following would be acceptable:  “Chemical analysis kit for testing swimming pool water; water purifying and treatment chemicals for use in swimming pools and spas,” in class 1;

 

“Magnetic stirrers for use in water analysis and treatment; watergrams; printed water test instruction cards; books, booklets and pamphlets concerning water analysis, chemistry and testing, and concerning pool and spa care and maintenance; posters; paper banners,” in class 16;

 

“Point of purchase displays,” in class 20.

 

The applicant must rewrite the identification of goods in its entirety because of the nature and extent of the amendment.  37 C.F.R. §2.74(b).

 

Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, the applicant may not amend to include any goods that are not within the scope of goods set forth in the present identification.

 

COMBINED APPLICATION REQUIREMENTS

 

If the applicant prosecutes this application as a combined, or multiple‑class, application based on use in commerce under Trademark Act Section 1(a), 15 U.S.C. §1051(a), the applicant must comply with each of the following:

 

(1)  The applicant must specifically identify the goods in each class and list the goods by international class with the classes listed in ascending numerical order.  TMEP §1403.01.

 

(2)  The applicant must submit a filing fee for each international class of goods not covered by the fee already paid.  37 C.F.R. §§2.6(a)(1) and 2.86(b); TMEP §§810.01 and 1403.01.  Effective January 1, 2003, the fee for filing a trademark application is $335 for each class.  This applies to classes added to pending applications as well as to new applications filed on or after that date.  

 

(3)  The applicant must submit: 

 

(a) dates of first use and first use in commerce and one specimen for each class that includes goods based on use in commerce under Trademark Act Section 1(a).  The dates of use must be at least as early as the filing date of this application, 37 C.F.R. §§2.34(a)(1) and 2.86(a), and the specimen(s) must have been in use in commerce at least as early as the filing date of the application, and/or

 

(b) a statement of a bona fide intention to use the mark in commerce on or in connection with all the goods specified in each class that includes goods based on a bona fide intention to use the mark in commerce under Trademark Act Section 1(b), where such statement was not included for the goods in the original application.

 

(4)  The applicant must submit an affidavit or a declaration under 37 C.F.R. §2.20 signed by the applicant to verify (3) above.  37 C.F.R. §§2.59(a) and 2.71(c).

 

SPECIMENS

 

Despite the applicant’s claim that the specimens are point-of-sale displays, the specimens themselves indicate otherwise, and there is no evidence to support any other conclusion.  The two photographs of record are clearly of signs posted on a glass wall that seems to be part of a pool supply store.  The proposed mark only appears in reference to a fictitious character (the “pool investigotter”) used in different advertising copy which urges consumers to use Taylor products, as follows.

 

                           THE POOL INVESTIGOTTER knows quality when he sees it!

 

                        RECOMMENDED BY THE POOL INVESTIGOTTER

 

The yellow advertisement appears to be a handout for customers when they enter the store.  It reads in relevant part:

 

                        Welcome to taylor!  MUST DO’s while you’re here:

 

                        Watch 2-minute presentation…

 

                        Have badge scanned…

 

                        See other recent product developments…

 

                        Learn about the advantages of …

 

                        Ask about possibilities for private labeling

 

                        Get FREE 60-day trial of The Countertop Chemist…

 

                        The POOL INVESTIGOTTER says, “Be confident when you take a dip…

 

All the foregoing uses of POOL INVESTIGOTTER are only as part of a larger advertising phrase, and clearly only refer to a stylized otter who exhorts readers to use or trust Taylor products.  Such use fails to show the porposed mark used as a trademark for any goods.  Also, these specimens do not appear to be displays associated with the goods, and there is no evidence to show that they are.

Displays associated with the goods essentially comprise point-of-sale material, such as banners, shelf-talkers, window displays, menus and similar devices.  Further, the display must predominantly display the trademark in question and associate it with, or relate it to, the goods.  The display must be related to the sale of the goods so that an association of the two is inevitable.  See In re Bright of America, Inc., 205 USPQ 63 (TTAB 1979), and cases cited therein.  Folders and brochures that describe goods and their characteristics or serve as advertising literature are not per se “displays.”  In re Schiapparelli Searle, 26 USPQ2d 1520 (TTAB 1993); In re Drilco Industrial Inc., 15 USPQ2d 1671 (TTAB 1990).  In order to rely on such materials as specimens, an applicant must submit evidence of point-of-sale presentation.  See In re Ancha Electronics Inc., 1 USPQ2d 1318 (TTAB 1986).

For the foregoing reasons, the requirement for acceptable, properly verified trademark specimens is continued and made FINAL.  Trademark Act Sections 1, 2, 3 and 45; 37 C.F.R. Sections 2.56 and 2.76(b)(2).

 

VERIFICATION OF SUBSTITUTE SPECIMENS

 

The statement supporting use of the substitute specimen must read as follows: 

 

The applicant used the substitute specimen in commerce prior to filing the amendment to allege use.

 

The applicant must sign this statement either in affidavit form or with a declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.59(b)(1). 

 

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 applicant used the substitute specimen in commerce prior to filing the amendment to allege use; 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)

 

PROPER RESPONSE TO 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). 

 

 

                       

/Ira Goodsaid/

Examining Attorney

Law Office 115

(703) 308-9115 ext. 159

ecom115@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.

 

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

 

For general and other useful information about trademarks, you are encouraged to visit the Office’s web site at http://www.gov.uspto.report/main/trademarks.htm

 

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