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  76/473292

 

This letter responds to the applicant’s communication filed on May 20, 2004.   The examining attorney acknowledges and accepts  the applicant’s amended identification and classification of goods, and has entered the same into the record. Accordingly, the identification and classification requirement is WITHDRAWN.  For reasons that follow, the specimen requirement is maintained as FINAL.

 

SPECIMENS – FINAL REFUSAL MAINTAINED

 

In the initial office action dated March 24, 2003, the examining attorney found that the specimen was unacceptable as advertising and promotional material.   By way of response dated September 26, 2003, the applicant argued that the specimens submitted were in the nature of a catalog and therefore acceptable pursuant to Lands’ End Inc. v. Manbeck, 797 F. Supp. 511, 24 USPQ2d 1314 (E.D. Va. 1992),. 

 

In the final action, dated November 18, 2003, the examining attorney noted that a catalog would be acceptable provided that they meet certain criteria, which applicant had not met.  To the extent that the specimens may be considered a catalog specimen pursuant to Lands’ End Inc. v. Manbeck, 797 F. Supp. 511, 24 USPQ2d 1314 (E.D. Va. 1992), it does not appear to meet the relevant criteria for displays associated with the goods.  TMEP section 904.06(a) states that “examining attorneys should accept any catalog or similar specimen as a display associated with the goods, provided:  (1) it includes a picture of the relevant goods; (2) it shows the mark sufficiently near the picture of the goods to associate the mark with the goods; and (3) it includes the information necessary to order the goods, (e.g., a phone number, mailing address, or e-mail address).”  Accordingly, the applicant was advised to submit a complete copy of the catalog specimen, rather than just the cover pages, which would show the mark in reference to all identified goods along with ordering information.

 

Applicant submits in its response that a full copy of the catalog is provided with the response, and further notes that each page of pictured products includes the subject mark, and also that ordering information is also included therein.  Unfortunately, the record does not contain a copy of the complete catalog, only a copy of the cover pages.  The Office may have negligently not copied and scanned all copies of said catalog. The applicant is requested to forward a replacement copy of the previously submitted catalog.  The examining attorney regrets any inconvenience to the applicant as a result of the issue not being previously being raised. 

 

For the forgoing reasons, the specimen requirement is maintained as  FINAL.  If applicant fails to respond to this final action within six months of the mailing date, the application will be abandoned.  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)); and/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).

 

 

NOTICE:  TRADEMARK OPERATION RELOCATING OCTOBER AND NOVEMBER 2004

 

The Trademark Operation is relocating to Alexandria, Virginia, in October and November 2004.  Effective October 4, 2004, all Trademark-related paper mail (except documents sent to the Assignment Services Division for recordation, certain documents filed under the Madrid Protocol, and requests for copies of trademark documents) must be sent to:

 

Commissioner for Trademarks

P.O. Box 1451

Alexandria, VA  22313-1451

 

Applicants, registration owners, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at www.uspto.gov.

 

Please feel free to contact the undersigned attorney if you wish to discuss this application.

 

 

/John S. Yard/

Trademark Examining Attorney

Law Office 115

(571) 272-9486

 

 

 

How to respond to this Office Action:

 

You may respond formally using the Office's Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://eteas.gov.uspto.report/V2.0/oa242/WIZARD.htm and follow the instructions therein, but you must wait until at least 72 hours after receipt if the office action issued via e-mail).  PLEASE NOTE: Responses to Office Actions on applications filed under the Madrid Protocol (Section 66(a)) CANNOT currently be filed via TEAS.

 

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.