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  76/497219

 

This letter responds to the applicant's communication filed on September 2, 2003.  The applicant provided specimens with a verified statement that the mark was in use as of the filing date of the application.  The specimens are not acceptable for the reasons discussed below.  The requirement or acceptable specimens is made FINAL.

 

Mark Differs on Specimen and Drawing

 

The drawing displays the mark as a silhouette of a horse’s head, and is lined for the color blue.  However, this differs from the display of the mark on the specimen, where it appears as a stylized horses head with stylized features of the horse’s head, neck and mane in black and gray.  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 and with the blue coloring indicated in the drawing.  37 C.F.R. §2.51; TMEP §807.14.  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) and 2.72(a); TMEP §904.09.  See the attached declaration.

 

The requirement for a substitute specimen that matches the drawing is made FINAL.  Alternatively, the applicant may amend the filing basis as discussed below.

 

Substituting A Basis

 

The applicant may be able to overcome the refusal to register this mark by amending the application to assert a different basis for filing the application and submitting the requirements for the new basis.  TMEP §§806.03 et seq. 

 

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

 

Requirements for a Section 1(b) Filing 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 verified, i.e., supported either by an affidavit or by a declaration under 37 C.F.R. §§2.20 and 2.33.  Trademark Act Section 1(b), 15 U.S.C. §1051(b);  37 C.F.R. §2.34(a)(2)(i); TMEP §806.01(b).  See the attached declaration.

 

 

RESPONSE

 

Please note that the only appropriate responses to a final action are either (1) compliance with the outstanding requirements, if feasible, or (2) filing of an appeal to the Trademark Trial and Appeal Board.  37 C.F.R. §2.64(a).  If the applicant fails to respond within six months of the mailing date of this refusal, this Office will declare the application abandoned.  37 C.F.R. §2.65(a).

 

 

 

/Linda A. Powell/

Trademark Examining Attorney

Law Office 106

(703) 308-9106 ext. 259

(703) 746-8106 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

 

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