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  76/450066

 

The assigned examining attorney has reviewed the referenced application and determined the following.

 

Search

The examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d).  TMEP section 1105.01.

 

Failure to Function as a Mark

The examining attorney refuses registration because the proposed mark does not function as a trademark for the referenced goods.  Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051, 1052 and 1127.  Because the mark is not used properly in connection with the goods in trade [advertisements are not proper use in trade as discussed infra], the proposed mark neither identifies the goods of the applicant nor indicates their source.  In Re Remington Products Inc., 3 USPQ2d 1714 (TTAB 1987).  TMEP §§1202 et seq.

 

The examining attorney will reconsider this refusal if the  applicant submits substitute specimens showing use of the proposed mark as a trademark for the referenced goods.  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 at least as early as the filing date of the application.  37 C.F.R. Section 2.59(a); TMEP section 904.09.

 

Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration. If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informalities.

 

Specimens

The specimen is unacceptable as evidence of actual trademark use because they are mere advertisements.  Invoices, announcements, order forms, bills of lading, leaflets, brochures, publicity releases and other printed advertising material generally are not acceptable specimens.  In re Bright of America, Inc., 205 USPQ 63 (TTAB 1979); TMEP sections 903.05 and 903.07.  See In re Ultraflight Inc., 221 USPQ 903 (TTAB 1984).  The applicant must submit a specimen showing the mark as it is used in commerce.  37 C.F.R. Section 2.56.  Examples of acceptable specimens are tags, labels, instruction manuals, containers, and photographs that show the mark on the goods or packaging.  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 at least as early as the filing date of the application.  37 C.F.R. Section 2.59(a); TMEP section 904.09.

 

Drawing

The drawing is not acceptable because it will not reproduce satisfactorily since the wording and thermometer contain gray and stippling which is too close together and since there is a hazy grayish background design behind the mark which appears to be a copy error [ie it was copied from the specimen which has a background forest design].  The applicant must submit a new drawing showing the mark clearly and conforming to 37 C.F.R. Section 2.52. TMEP section 807.07(a).

The requirements for a special‑form drawing are as follows:

 

(1) The drawing must appear in black and white; no color is permitted.

 

(2)  Every line and letter must be black and clear.

 

(3)  The use of gray to indicate shading is unacceptable.

 

(4)  The lining must not be too fine or too close together.

 

(5)  The preferred size of the area in which the mark is displayed is 2½ inches (6.1 cm.) high and 2½ inches (6.1 cm.) wide.  It should not be larger than 4 inches (10.3 cm.) high or 4 inches (10.3 cm.) wide.

 

(6)  If the reduction of the mark to the required size renders any details illegible, the applicant may insert a statement in the application to describe the mark and these details.

 

37 C.F.R. §2.52; TMEP §§807.01(b) and 807.07(a).  The Office will enforce these drawing requirements strictly. 

 

The Office prefers that the drawing be depicted on a separate sheet of smooth, nonshiny, white paper 8 to 8½ inches (20.3 to 21.6 cm.) wide and 11 inches (27.9 cm.) long, and that the sheet contain a heading listing, on separate lines, the applicant’s complete name; the applicant’s address; the goods or services recited in the application; and, if the application is filed under Section 1(a) of the Act, the dates of first use of the mark and of first use of the mark in commerce; or, if the application is filed under Section 44(d), the priority filing date of the foreign application.  37 C.F.R. §2.52(b); TMEP §§807.01(a), 807.01(b), 807.01(c) and 807.07(a).

 

NOTE that the applicant may choose to delete the hazy background design which does not appear to be a part of the mark.

 

Stippling

Notice:  If the substitute drawing contains stippling for shading purposes only, the applicant must insert a statement to that effect (“The stippling in the drawing is for shading purposes only”).  37 C.F.R. Section 2.37; TMEP section 807.09(e).

 

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.  If the applicant has questions regarding the status of the application, the applicant should telephone the status line at 703-305-8747.

 

Fee increase effective January 1, 2003

Effective January 1, 2003, the fee for filing an application for trademark registration will be increased to $335.00 per International Class.  The USPTO will not accord a filing date to applications that are filed on or after that date that are not accompanied by a minimum of $335.00. 

 

Additionally, the fee for amending an existing application to add an additional class or classes of goods/services will be $335.00 per class for classes added on or after January 1, 2003.

 

 

 

 

/Rebecca L. Gilbert/

Trademark Attorney

Law Office 113

703-308-9103 ex 119

ecom113@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.