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  76/449592

 

This letter responds to the applicant’s communication filed on March 25, 2004.  The applicant (1) added an additional class of goods in Class 11, totaling three classes, 09, 11 and 42 and (2) submitted a substitute specimen with a supporting declaration for the goods in Class 11.  No. 1 is accepted and made part of the record.  The substitute specimen is unacceptable as evidence of actual trademark use.  The examining attorney makes final the requirement of an acceptable substitute specimen with verification statement.  Please note that applicant submitted conflicting first use dates, December 14, 2001 and January 31, 2001.  However, the applicant’s supporting declaration states both first use dates as December 14, 2001.  Since this is the same dates as the other first use dates of the other classes, then the December 14, 2001 first use dates are accepted and made of record.  The following is advised.

 

All other requirements have been accepted and made part of the record.

 

Final Requirement— Specimen Not Acceptable to Show Use on Goods

 

In the Priority Action of October 24, 2004, the specimens originally submitted was found to be unacceptable as evidence of actual trademark use for the goods in Class 11.

 

In the communication of March 25, 2004, the applicant submitted a specimen that is unacceptable as evidence of actual trademark use for the goods in Class 11.  The submitted specimen is exactly the same as one of the original specimens acceptable for services in Class 42.  However, the current specimen of record comprises a brochure and is unacceptable as evidence of actual trademark use because it is advertising material.  Invoices, announcements, order forms, bills of lading, leaflets, brochures, publicity releases and other printed advertising material, while normally acceptable for showing use in connection with services, generally are not acceptable specimens for showing trademark use in connection with goods.  In re Bright of America, Inc., 205 USPQ 63 (TTAB 1979); See In re Ultraflight Inc., 221 USPQ 903 (TTAB 1984); TMEP §§904.05 and 904.07.

 

Therefore, applicant must submit (1) a substitute specimen showing the mark as it is used in commerce on the goods or on packaging for the goods, and (2) a statement that “the substitute specimen was in use in commerce at least as early as the filing date of the application,” verified with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §§2.56 and 2.59(a); TMEP §904.09.

 

Examples of acceptable specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the goods or packaging, or displays associated with the goods at their point of sale.  TMEP §§904.04 et seq.

 

The requirement that applicant submit an acceptable substitute specimen with a supporting  verification statement is maintained and made FINAL.

 

Proper Response to Final Action

 

If applicant does not respond within six months of the mailing date of this final action, then the following class to which the final requirement(s) apply will be deleted from the application:  International Class 11. 

 

The application will proceed forward for the remaining classes, namely International Classes 09 and 42.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).

 

Applicant may respond to this final action by: 

 

(1)   submitting a response that fully satisfies all outstanding requirements, if feasible (37 C.F.R. §2.64(a)); or

(2)   filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class (37 C.F.R. §§2.6(a)(18) and 2.64(a); TMEP §§715.01 and 1501 et seq.; TBMP Chapter 1200).

 

In certain circumstances, a petition to the Director may be filed to review a final action that is limited to procedural issues, pursuant to 37 C.F.R. §2.63(b)(2).  37 C.F.R. §2.64(a).  See 37 C.F.R. §2.146(b), TMEP §1704, and TBMP Chapter 1201.05 for an explanation of petitionable matter.  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

 

 

 

/William T. Verhosek/

Examining Atty/LO 114

703-308-9114x142

(Fax) 703-746-8114

 

 

 

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.