To: Linda E. B. Mickleburgh
From: James M. Nelis
This e-mail supplements my earlier telephone call to you. In response to
this auto responder, I was able to convert the gif file to a jpg file.
Furthermore, below I reiterate all the representations made in my previous
e-mail response.
Enclosed is a .jpg file showing the use of Cool Foam in commerce. It can be
found on the website of the petitioner, FibreCraft at www.fibrecraft.com.
Furthermore, no claim is made to the exclusive right to use FOAM apart from
the mark as shown.
DECLARATION
The substitute specimen was in use in commerce at least as early as the
filing date of the application.
The applicant must sign this statement either in affidavit form or with a
declaration under 37 C.F.R. Section 2.20.
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.
James M. Nelis
(Signature)
Attorney for Applicant
(Print or Type Name and Position)
02/23/04
Date)
James M. Nelis
Mark G. Mulroe & Associates, Ltd.
209 S. Main Street, Suite 200
Mount Prospect, IL 60056
(847) 590-1010
NOTICE: THIS COMMUNICATION, INCLUDING ANY ATTACHMENT, IS BEING SENT
BY A LAWYER AND MAY CONTAIN LEGALLY PRIVILEGED INFORMATION OR
COMMUNICATIONS. THE SENDER DOES NOT INTEND TO WAIVE ANY PRIVILEGE
THAT MAY ATTACH TO THIS COMMUNICATION. IF YOU ARE NOT THE INTENDED
RECIPIENT, YOU ARE NOT AUTHORIZED TO INTERCEPT, READ, PRINT, RETAIN, COPY
FORWARD, OR DISSEMINATE THIS COMMUNICATION. IF YOU HAVE RECEIVED THIS EMAIL
IN ERROR, PLEASE NOTIFY THE SENDER IMMEDIATELY BY EMAIL AND
DELETE IT AND ALL COPIES.
-----Original Message-----
From: TM Automated Response [mailto:TMAutomatedResponse@USPTO.GOV]
Sent: Wednesday, February 25, 2004 6:48 AM
To: jnelis@mulroelaw.lawoffice.com
Subject: USPTO Auto-reply: RE: TRADEMARK APPLICATION NO. 76488922 - COOL
FOAM - N/A
This is an AUTO-REPLY. DO NOT REPLY TO THIS E-MAIL ADDRESS. This mailbox
is not monitored.
Your email message, with subject "RE: TRADEMARK APPLICATION NO. 76488922 -
COOL FOAM - N/A", was received 2/24/04 11:13:09 AM.
It could not be auto-processed by this facility because of the following
problem(s):
Invalid attachment Type: coolfoamproducts.gif
Only JPG attachments are allowed.
If you have any QUESTIONS or COMMENTS please address your question or
comment to one of the following places:
-If you have received an Office Action from a specific Examining
Attorney, you should contact that Examining Attorney directly using the
information that appears at the bottom of the Office Action.
-If your question or comment is not directed toward a specific Examining
Attorney, please contact the Trademark Assistance center at
TrademarkAssistanceCenter@uspto.gov or (703)-308-9000.
Please note: All electronic communications must be signed using the "/name/"
format. If you did not sign your amendment, please re-send it with your
signature. TMEP sections 712 and 804.05.
Please also note: Due to a realignment with the Trademark Law Offices, Law
Offices 101, 104, 107, nad 109 no longer exist. The mailboxes for those law
offices have been redirected to other Law Offices' mailboxes and should no
longer be used.
For further information about responding via e-mail,m please see the
PTONotice at http://www.gov.uspto.report/emergencyalerts/tmelecresp.htm.
----- Original Message -----
From: jnelis@mulroelaw.lawoffice.com [mailto:jnelis@mulroelaw.lawoffice.com]
Sent: 2/24/04 11:13:09 AM
To: ECom106
Subject: RE: TRADEMARK APPLICATION NO. 76488922 - COOL FOAM - N/A
UNITED STATES DEPARTMENT OF COMMERCEEnclosed is a .gif file showing the use
of Cool Foam in commerce. It can be found on the website of the petitioner,
FibreCraft at www.fibrecraft.com.
Furthermore, no claim is made to the exclusive right to use FOAM apart from
the mark as shown.
DECLARATION
The substitute specimen was in use in commerce at least as early as the
filing date of the application.
The applicant must sign this statement either in affidavit form or with a
declaration under 37 C.F.R. Section 2.20.
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.
_James M. Nelis________________
(Signature)
_Attorney for Applicant___________
(Print or Type Name and Position)
_02/2304_____________________
(Date)
James M. Nelis
Mark G. Mulroe & Associates, Ltd.
209 S. Main Street, Suite 200
Mount Prospect, IL 60056
(847) 590-1010
NOTICE: THIS COMMUNICATION, INCLUDING ANY ATTACHMENT, IS BEING SENT
BY A LAWYER AND MAY CONTAIN LEGALLY PRIVILEGED INFORMATION OR
COMMUNICATIONS. THE SENDER DOES NOT INTEND TO WAIVE ANY PRIVILEGE
THAT MAY ATTACH TO THIS COMMUNICATION. IF YOU ARE NOT THE INTENDED
RECIPIENT, YOU ARE NOT AUTHORIZED TO INTERCEPT, READ, PRINT, RETAIN, COPY
FORWARD, OR DISSEMINATE THIS COMMUNICATION. IF YOU HAVE RECEIVED THIS EMAIL
IN ERROR, PLEASE NOTIFY THE SENDER IMMEDIATELY BY EMAIL AND
DELETE IT AND ALL COPIES.
-----Original Message-----
From: ECom106 [mailto:ecom106@uspto.gov]
Sent: Monday, July 21, 2003 11:10 AM
To: jnelis@mulroelaw.lawoffice.com
Subject: TRADEMARK APPLICATION NO. 76488922 - COOL FOAM - N/A
UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/488922
APPLICANT: Fibre Craft Materials
Corporation
CORRESPONDENT ADDRESS:
JAMES M. NELIS
MARK G. MULROE & ASSOCIATES, LTD.
209 S. MAIN STREET, SUITE 200
MOUNT PROSPECT IL 60056
RETURN ADDRESS:
Commissioner for Trademarks
2900 Crystal Drive
Arlington, VA 22202-3514
ecom106@uspto.gov
MARK: COOL FOAM
CORRESPONDENT'S REFERENCE/DOCKET NO: N/A
CORRESPONDENT EMAIL ADDRESS:
jnelis@mulroelaw.lawoffice.com
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.
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 76/488922
The assigned examining attorney has reviewed the referenced application
and determined the following.
SEARCH RESULTS
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.
SPECIMENS
The specimen is unacceptable as evidence of actual trademark use because
it is not use in commerce, but rather an "in house" list. The applicant
must submit a specimen showing the mark as used in commerce. 37 C.F.R.
Section 2.56. Examples of acceptable specimens are tags, labels, instruction
manuals, containers or 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. Jim Dandy
Co. v. Siler City Mills, Inc., 209 USPQ 764 (TTAB 1981); 37 C.F.R. Section
2.59(a); TMEP section 905.10.
DECLARATION - SUBSTITUTE SPECIMENS
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 applicant must sign this statement either in affidavit form or with a
declaration under 37 C.F.R. Section 2.20.
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)
DISCLAIMER
The applicant must disclaim the descriptive wording "FOAM" apart from the
mark as shown. Trademark Act Section 6, 15 U.S.C. Section 1056; TMEP
sections 1213 and 1213.02(a). The wording is merely descriptive because it
is the make-up of the goods.
The computerized printing format for the Trademark Official Gazette
requires a standard form for a disclaimer. TMEP section 1213.09(a)(i). A
properly worded disclaimer should read as follows:
No claim is made to the exclusive right to use FOAM apart from
the mark as shown.
See In re Owatonna Tool Co., 231 USPQ 493 (Comm'r Pats. 1983).
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
always provide a telephone number to speed up further processing.
Linda E. B. Mickleburgh
/lebm/
Examining Attorney
Law Office 106
703-308-9106 x222
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.
