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  76/496039

 

This letter responds to the applicant’s communication filed on 9/29/03.

 

Basis for Application

 

If applicant is based solely on Section 1(a) use in commerce, then applicant must request that the Office delete references to the Section 1(b) intent to use the mark basis listed in the application.

 

Dates of Use

 

The application specifies the date of first use of the mark in commerce.  However, it does not specify the date of first use of the mark anywhere.  The applicant must provide this date, verified by an affidavit or a declaration under 37 C.F.R. §2.20.  Trademark Act Section 1(a)(2), 15 U.S.C. §1051(a)(2); 37 C.F.R. §§2.34(a)(1)(ii) and 2.71(c); TMEP §§903 and 903.01.  The applicant must specify a date of first use of the mark anywhere even if it is the same as the date of first use in commerce.  TMEP §903.04.  If the applicant adopts the date of first use in commerce as the date of first use anywhere, the applicant need not verify the amendment.  TMEP §903.04. 

 

Identification of Goods

 

The amendment to the identification of goods has been accepted.

 

Translation

 

The translation statement has been accepted.

 

Description of the mark

 

The description of the mark has been accepted.

 

Drawing

 

The drawing displays the mark as LL LUJO and design as one mark.  However, this differs from the display of the mark on the specimen, where it appears as spatially separate elements.  The applicant even lists the elements by numbers1, 2 and 3. The proposed specimen does not project the proposed mark as a single mark projecting a unitary commercial impression.   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). Further, an application must be limited to one mark.  37 C.F.R. §2.52(a).

Specimen

Even if the specimen showed the mark as a single mark projecting a unitary commercial impression, the specimen would be unacceptable for the following reason.

The specimen is unacceptable as evidence of actual trademark use because it does not show how the mark is used on goods.  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 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. §2.20; TMEP §904.09. 

 

If the applicant cannot comply with the requirement for a specimen for the 1(a) basis asserted, the applicant may delete references to the Section 1(a) basis and maintain the Section 1(b) basis listed in the application.  See TMEP §§806.03 et seq.

 

If the applicant maintains Trademark Act Section 1(b) as a basis for filing, the applicant must file an allegation of use in commerce prior to registration, i.e., an amendment to allege use under Trademark Act Section 1(c), 15 U.S.C. §1051(c), or a statement of use under Trademark Act Section 1(d), 15 U.S.C. §1051(d).  37 C.F.R. §2.35(h); TMEP §§806.01(b) and 1103. 

 

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 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)

 

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

 

 

/Priscilla Milton/

Examining Attorney

Law Office 110

Priscilla.Milton@uspto.gov (for informal questions)

(703) 308-9110 Ext. 423

ecom110@uspt.gov (for Formal responses only)

 

 

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.