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  76/499906

 

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. §1052(d).  TMEP §704.02.

 

However, before the mark can be approved for publication, the applicant must address the following informalities:

 

1.            Classification of Goods

 

The applicant has classified the goods incorrectly.  The applicant must amend the application to classify the goods in International Class 33.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401.02(a) and 1401.03(b).

 

2.            Identification of Goods

 

a.         The wording “Soju” in the identification of goods is unacceptable as indefinite.  The applicant may amend this wording to “Soju, namely, distilled spirits,” if accurate.  TMEP §1402.01.

 

b.         The applicant must clarify the identification of goods by replacing the periods contained therein with semi-colons.  TMEP §1402.01.

 

c.         The applicant may adopt the following identification of goods in International Class 33, if accurate:  SOJU, NAMELY, DISTILLED SPIRITS; SHO-CHU, NAMELY, DISTILLED SPIRIT FROM GRAIN; REFINED RICE WINE; PLUM WINE; WINE; WHISKY; CHINESE KOALYANGJU; COGNAC; BRANDY; SAKE.

 

3.            Drawing of the Mark

 

In the application, the applicant indicates that it is applying to register a typed drawing of the mark.  However, the letter “Ō” in SHŌGUN is not capitalized on the drawing page.  The Office will accept a typed drawing that includes diacritical marks such as the German umlaut, the Spanish tilde, the French accent.  However, the applicant must type the mark entirely in capital letters, and include the relevant diacritical mark(s).  TMEP §807.06(b).

 

Accordingly, the applicant must submit a substitute drawing, showing the mark in all capital letters.  The drawing may be prepared using a typewriter or word processor, or by any other means that will display the mark in a manner that will reproduce satisfactorily in special form.  The mark must be in pica, elite, or larger type.  TMEP §807.06(b).

 

The applicant may include the following statement in the record to indicate the nature of such a mark:

 

            The mark is presented without any claim as to special form.

 

4.            Specimen

 

The specimen is unacceptable as evidence of actual trademark use because it does not show the use of the mark in commerce.  The applicant submitted as its specimen an artist’s rendering of bottles and labels for its goods.  The specimen may not be a “picture” of the mark, such as an artist’s drawing or a printer’s proof that merely illustrates what the mark looks like and is not actually used on or in connection with the goods in commerce.  TMEP §904.04.

 

Accordingly, 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 following is a properly worded declaration under 37 C.F.R. §2.20, with the aforementioned wording.  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 substitute specimen was in use in commerce at least as early as the filing date of the application; and 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)

 

RESPONSE GUIDELINES

 

1.         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.

 

2.         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.

 

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

 

A prompt response to this Office action will expedite the handling of this matter.

 

 

 

/Barbara A. Gaynor/

Barbara A. Gaynor

Examining Attorney

Law Office 115

(703) 308-9115 ext. 123

ecom115@uspto.gov

 

 

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.