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  76/467270

 

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

 

NO CONFLICTING MARKS NOTED

 

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.

 

DRAWING DISPLAYS TWO MARKS

 

The drawing displays two marks, “ALPHA RESPONSE” and “ALPHA REAXION.”  Accordingly, registration is refused because “the applicant seeks registration of more than one mark,” in the same application.  TMEP section 807.03, citing In re Hayes, 62 USPQ2d 1443 (TTAB 2002); In re Elvis Presley Enterprises, Inc., 50 USPQ2d 1632 (TTAB 1999); In re Walker-Home Petroleum, Inc., 229 USPQ 773 (TTAB 1985); In re Jordan Industries, Inc., 210 USPQ 158 (TTAB 1980); In re Audi NSU Auto Union AG, 197 USPQ 649 (TTAB 1977); In re Magic Muffler Service, Inc., 184 USPQ 125 (TTAB 1974); In re Robertson Photo-Mechanix, Inc., 163 USPQ 298 (TTAB 1969).

 

The applicant may not amend the application to delete one of the marks because such an amendment would constitute a material alteration.  37 C.F.R. §2.72; TMEP §§807.14, 807.14(a) and 807.14(a)(i).  See In re Wine Society of America, Inc., 12 USPQ2d 1139 (TTAB 1989); In re Nationwide Industries Inc., 6 USPQ2d 1883 (TTAB 1988); In re Pierce Foods Corp., 230 USPQ 307 (TTAB 1986).

 

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.

 

The examining attorney will also reconsider this refusal if the applicant submits a specimen depicting the mark as it appears on the drawing. 

 

SUBSTITUTE SPECIMEN REQUIRED

 

In the alternative the examining attorney finds that the specimens of record are unacceptable because they do not show use of the mark as it appears on the drawing.  In addition, the specimens are unacceptable because they do not show the mark as it actually appears on the goods in commerce.  Specifically, please note the following:

 

The drawing displays the mark as “ALPHA RESPONSE ALPHA REAXION”.  However, this differs from the display of the mark on the specimens, where it appears only as “ALPHA RESPONSE” on one specimen and only as “ALPHA REAXION” on the other specimen.  The applicant cannot amend the drawing to conform to the display on the specimen because the character of the mark would be materially altered.  37 C.F.R. §2.72(a); TMEP §§807.14, 807.14(a) and 807.14(a)(i). Therefore, the applicant must submit a substitute specimen that shows use of the mark as it appears on the drawing.  37 C.F.R. §2.51; TMEP §807.14. 

 

Moreover, the specimen is unacceptable as evidence of actual trademark use because it does not show the mark as it is used in commerce on the identified golf clubs.  Accordingly, the substitute specimen must also show the mark as it is used in commerce.  37 C.F.R. §2.56.  Examples of acceptable specimens are tags, labels, instruction manuals, containers, and 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.  37 C.F.R. §2.59(a); TMEP §904.09.  A properly worded declaration is attached for the applicant’s use.

 

RESPONSE GUIDELINES

 

No set form is required for response to this Office action.  The applicant must respond to each point raised.  The applicant should simply set forth the required changes or statements and request that the Office enter them.  The applicant must sign the response.  In addition to the identifying information required at the beginning of this letter, the applicant should provide a telephone number to speed up further processing.

 

In all correspondence to the Patent and Trademark Office, the applicant should list the name and law office of the examining attorney, the serial number of this application, the mailing date of this Office action, and the applicant’s telephone number.

 

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

 

 

 

 

/Martha L. Fromm/

Trademark Attorney

Law Office 106

Phone: (703) 308-9106 ext. 221

Fax:  (703) 746-8106

 

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 and services will be $335.00 per class for classes added on or after January 1, 2003.

 

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.

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

 

The substitute specimen was in use in commerce at least as early as the filing date of the application.

 

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)

 

 

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(Print or Type Name and Position)

 

 

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(Date)