UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/460195
APPLICANT: LEE, PETER
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CORRESPONDENT ADDRESS: C. STEPHANIE CHEN LAW OFFICES OF C. STEPHANIE CHEN 17870 CASTLETON ST STE 307 CITY OF INDUSTRY CA 91748-6794
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3513 ecom115@uspto.gov
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MARK: BONSAI
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
CORRESPONDENT EMAIL ADDRESS:
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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 76/460195
The assigned examining attorney has reviewed the referenced application and determined the following.
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. §1052(d). TMEP §704.02.
The applicant lists its goods as PHARMACEUTICALS on the face of the application and also lists AIR FRESHENER on the drawing page. It is unclear if the applicant is applying for AIR FRESHENERS or PHARMACEUTICALS, or both. Therefore, the applicant must clarify its identification of goods.
If the applicant is applying for PHARMACEUTICALS, then the identification of goods is unacceptable as indefinite. The applicant may amend this wording to “pharmaceutical preparations for the treatment of [specify illness or ailment],” in INT. CLASS 5, if accurate. TMEP §1402.01.
Please note, if the applicant is applying for “air fresheners,” then the identification of goods is acceptable as worded.
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.
If the applicant is applying for “pharmaceutical preparations,” then the specimen does not show use of the mark for any goods/services identified in the application. The applicant must submit a specimen showing use of the mark for the goods/services specified. 37 C.F.R. §2.56; TMEP §904. The applicant must verify, with an affidavit or a declaration under 37 C.F.R. §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. §2.59(a); TMEP §904.09.
However, if the applicant is applying for “air fresheners,” then the specimen is unacceptable as evidence of actual trademark use because it is an advertisement and does not show use of the mark on the goods in commerce. The applicant must submit a specimen showing the mark as used in commerce. 37 C.F.R. §2.56. Examples of acceptable specimens are tags, labels, instruction manuals, containers or photographs that show the mark on the goods or packaging. TMEP §904.04 et seq. The applicant must verify, with an affidavit or a declaration under 37 C.F.R. §2.20, that the substitute specimen was in use in commerce at least as early as the filing date of the application. Jim Dandy Co. v. Siler City Mills, Inc., 209 USPQ 764 (TTAB 1981); 37 C.F.R. §2.59(a); TMEP §904.09.
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 he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. §§1051(b), 1126(d) or 1126(e), he/she believes the applicant to be entitled to use such mark in commerce; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; and that all statements made of his/her own knowledge are true and all statements made on information and belief are believed to be true.
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(Signature)
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(Print or Type Name and Position)
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(Date)
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
/Curtis French/
Trademark Attorney
Law Office 115
ecomm115@uspto.gov
703-308-9115 ext. 250
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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.