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  76/449011  WRIGHTALLOY

 

This letter responds to the applicant's Statement of Use filed on April 9, 2004.  The examining attorney acknowledges receipt of the specimen, however, the applicant must still address the following issue.

 

I.  SPECIMEN:

 

The specimen is unacceptable as evidence of actual trademark use because it does not display the mark as in relation to the applicant’s goods.  Specifically, the applicant’s brochure provides the images of the applicant’s ‘finished’ goods and not the raw steel for use in further manufacturing.  For a catalog or similar specimen to be acceptable as a display associated with the goods, it must (1) provide a picture of the relevant goods, (2) include the mark sufficiently near the picture of the goods to associate the mark with the goods, and (3) include information necessary to order the goods. TMEP section 905.06(a).  Here, (1) is missing.

 

Accordingly, the applicant must submit a specimen showing the mark as it is used in commerce.  37 C.F.R Sections 2.56 and 2.88(b)(2).  Examples of acceptable specimens are tags, labels, instruction manuals, containers or photographs that show the mark on the goods or packaging.  TMEP section 1301.04.  The applicant must verify, with an affidavit or a declaration under 37 C.F.R. Section 2.20, that the substitute specimen was in use in commerce prior to the expiration of the time allowed to the applicant for filing a statement of use.  37 C.F.R. Section 2.59(b); TMEP section 905.10.

 

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

 

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

 

The applicant must sign this statement either in affidavit form or with a declaration under 37 C.F.R. Section 2.20. 

 

DECLARATION:

 

The following is a properly worded declaration under 37 C.F.R. Section 2.20.  If the applicant uses this declaration rather than a notarized statement, then the applicant should insert the following declaration signed by a person properly authorized to sign on behalf of the applicant.

 

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)

 

 

 

II.  CONCLUSION:

 

If the applicant has any questions or needs assistance in responding to this Office Action, please telephone the assigned examining attorney.

 

/KaranChhina/

Karanendra S. Chhina

Trademark Attorney

Law Office 114

(703) 308-9114 x441

 

 

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 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.