Offc Action Outgoing

Trademark

Barr Laboratories, Inc.

Offc Action Outgoing

UNITED STATES DEPARTMENT OF COMMERCE

UNITED STATES PATENT AND TRADEMARK OFFICE

SERIAL NO: 76/503619

APPLICANT: Barr Laboratories, Inc.

CORRESPONDENT ADDRESS:

TRACY-GENE G. DURKIN

STERNE, KESSLER, GOLDSTEIN & FOX

1100 NEW YORK AVENUE, N.W.

WASHINGTON, D.C. 20005-3934

RETURN ADDRESS:

Commissioner for Trademarks

2900 Crystal Drive

Arlington, VA 22202-3514

MARK:

CORRESPONDENT’S REFERENCE/DOCKET NO: 1710.3410000

CORRESPONDENT EMAIL ADDRESS:

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 76/503619

The Office has reassigned this application to the undersigned trademark examining attorney. This letter responds to the applicant's communication filed on April 1^st, 2004. All refusals and/or requirements raised in the first Office Action have been met and/or withdrawn. The Amendment to Allege Use raises the following new issue. This Office Action is non-final.

Mark Differs on Drawing and Specimen – Amendment to Allege Use – New Specimen Required

The mark as depicted on the drawing disagrees with the mark as it appears on the specimen, and clarification is required. Specifically, the drawing displays the mark as a stylized sun with eight (8) rays, and the specimen shows the mark as a stylized partial sun with six rays in close proximity to other wording. Applicant may not amend the drawing to conform to the display on the specimen because the essence or character of the mark would be materially altered, i.e., the mark on the specimen creates a different commercial impression from the mark on the drawing. 37 C.F.R. §2.72(b); TMEP §§807.14 and 807.14(a)(i).

Applicant must do one of the following:

(1) submit a substitute specimen that shows use of the mark as it appears on the drawing, with a statement that “the substitute specimen was in use in commerce prior to filing the amendment to allege use,” verified with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20; 37 C.F.R. §§2.59(b) and 2.72(b); or

(2) withdraw the amendment to allege use. 37 C.F.R. §2.51; TMEP §807.14.

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

/Gina M. Fink/

Trademark Attorney - Law Office 103

Phone: (703) 308-9103 ext. 232

Law Office 103 Fax: (703) 746-8103

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 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.