UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

EXAMINER’S AMENDMENT/PRIORITY ACTION

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE.   This case will be given priority as an amended case if you respond to the requirements stated below within two months. 

 

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

 

 

Serial Number 76/461976

 

This letter responds to the applicant's communication filed on May 5, 2003.  The likelihood of confusion refusal has been withdrawn.

 

 

EXAMINER'S AMENDMENT

 

In accordance with the authorization granted by Brian Malkin on July 23, 2003, the application has been AMENDED as indicated below.  If the identification of goods or services has been amended, please note that any future amendments must be in accordance with 37 C.F.R. 2.71(a); TMEP section 1402.07(e).  Please advise the undersigned if there is an objection to the amendment.   

 

 

AMENDED IDENTIFICATION OF GOODS

 

The identification of goods is amended to read as follows: 

 

International Class 9:            Retail business communications and retail business management system comprised of a telephone featuring a one-touch button for communication related to loss prevention and inventory control.

 

 

PRIORITY ACTION

 

This case will be given priority as an amended case if you respond to the requirements stated below within two months.

 

SPECIMENS

 

The specimen is unacceptable as evidence of actual trademark use because it appears to be an advertisement.  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. Section 2.20.  At the end of the response, the applicant should insert the declaration signed by 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)

 

 

Substituting a basis

 

If the applicant cannot comply with the requirement for a specimen of use for the Section 1(a) basis asserted, the applicant may substitute a different basis for filing if the applicant can meet the requirements for the new basis.

 

In this case, the applicant may wish to amend the application to assert a Section 1(b) basis.

To base the application on a bona fide intention to use the mark in commerce, the applicant must submit the following statement:

 

The applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application since the filing date of the application.

 

This statement must be must be verified, i.e., supported either by an affidavit or by a declaration under 37 C.F.R. Sections 2.20 and 2.33. Trademark Act Section 1(b), 15 U.S.C. Section 1051(b);  37 C.F.R. Section 2.34(a)(2)(i).  See above for a properly worded declaration under 37 C.F.R. Section 2.20. 

 

 

 

/Bridgett G. Smith/

Examining Attorney

Law Office 115

(703) 308-9115 x 217

(703) 872-9237 fax

 

 

 

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