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  76/503555

 

            The assigned examining attorney has reviewed the referenced application and determined the following.

 

1.         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). Trademark Manual of Examining Procedure Section 704.01, (3rd Edition January 2002).

 

2.        Translation Required.

 

            The applicant will submit a translation of the non-English wording in the mark.  37 C.F.R. Section 2.61(b); Trademark Manual of Examining Procedure Section 809, (3rd Edition January 2002).  The translation shall read as follows:  The English translation of ENDURA is ___________.

 

3.         New Specimens Required: Product Brochures and Price Lists Are is Insufficient.

 

            For those listed goods that are based upon use, the specimens are unacceptable as evidence of actual trademark use because they are only product brochures and price lists.  Invoices, price lists/quotes, announcements, order forms, bills of lading, leaflets, brochures, publicity releases and other printed advertising material generally are not acceptable specimens because they fail to show use of the mark actually on the goods themselves.  In re Bright of America, Inc., 205 USPQ 63 (TTAB 1979); Trademark Manual of Examining Procedure Section 904.05 and 904.07, (3rd Edition January 2002).  See In re Ultraflight Inc., 221 USPQ 903 (TTAB 1984).  The applicant must submit a specimen showing the mark as it is used in commerce on the goods themselves.  37 C.F.R. Section 2.56.  Examples of acceptable specimens are tags, labels, instruction manuals, containers, and photographs that show the mark on the goods or packaging.  Please note that 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.  37 C.F.R. Section 2.59(a); Trademark Manual of Examining Procedure Section 904.09, (3rd Edition January 2002).

 

            The following is a properly worded declaration under 37 C.F.R. Section 2.20, with a statement that the substitute specimen was in use in commerce at least as early as the filing date of the application.  At the end of the response, the applicant should insert the declaration signed by someone authorized to sign under 37 C.F.R. Section 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 he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered; the substitute specimen was in use in commerce at least as early as the filing date of the application; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; and that 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)

 

 

 

4.         Claim Ownership of Prior Registration.

 

            The applicant will submit the following claim of ownership:  The applicant is the owner of U.S. Registration No. 2604212.

 

            Identification of a registration is necessary because the registration would, if not owned by the applicant, be a proper reference and basis for refusal under §2(d) of the Act. 

 

            37 C.F.R. Section 2.36; TMEP section 812.

 

5.            Responding to this Office Action.

 

            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.

 

            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.

 

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

ADDITIONAL CUSTOMER INFORMATION

 

· NOTICE FOR APPLICANT’S FILING IN INTERNATIONAL CLASS 42

 

Effective January 1, 2002, the 8th edition of the Nice Agreement governing the classification of goods and services divided prior International Class 42 into four service mark classes.  Information about revised International Class 42 and new International Classes 43, 44, and 45 is available at www.gov.uspto.report/web/offices/tac/notices/notices.htm.

 

All applications filed on or after January 1, 2002, must comply with the new classification schedule.  For applications filed before January 1, 2002, the new classification schedule is optional.  Applicants opting to amend to the new schedule must advise the assigned Examining Attorney.

 

 · CHANGE OF CORRESPONDENCE ADDRESS

 

Applicants may now file changes of correspondence via a new form on TEAS.   Address changes may be performed  on up to 20 cases at a time.  The Trademark Office strongly encourages applicants to use this time-saving form, which is available online at: www.gov.uspto.report/web/trademarks/tmchangeaddress.htm.

 

· NEW ELECTRONIC RESPONSE TO OFFICE ACTION FORM

 

On April 30, 2002, the Trademark Operation posted an electronic Response to Office Action form on the TEAS (Trademark Electronic Application System) web site.  By using this new web-based TEAS form, customers can (1) respond to an Office Action based on an application or Statement of Use; or (2) pay an additional fee after a phone call from the Office, i.e., to enable an Examiner's  Amendment.  Upon receipt of the electronically-submitted response, the prosecution history will automatically be updated to show "TEAS Response to Office Action received."  To access this new form, visit <<http://eteas.gov.uspto.report/V2.0/oa200>>.  NOTE: This form cannot be used to respond to any actions from either the Intent-to-Use (ITU) or Post-Registration areas. Forms for that purpose will be available in the future.

 

· NEW ELECTRONIC PRELIMINARY AMENDMENT FORM

 

On April 30, 2002, the Trademark Operation posted an electronic Preliminary Amendment form on the TEAS (Trademark Electronic Application System) web site.  By using this new web-based TEAS form, customers can submit a Preliminary Amendment prior to examination.  Upon receipt of the electronically-submitted preliminary amendment, the prosecution history will automatically be updated to show "TEAS Preliminary Amendment received."  To access this new form, visit <<http://eteas.gov.uspto.report/V2.0/pa200>>.  NOTE: This form should ONLY be used if an already-filed application has not yet been examined by the Office.

 

/John D. Dalier/

Trademark Examining Attorney

Law Office 105

(703) 308-9105, ext. 131

Main Fax: (703) 872-9875

Email: Ecom105@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.