UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

FINAL 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 76/504507

 

This letter responds to the applicant’s communication filed on April 5, 2004.

 

Proposed Mark Does Not Function as a Trademark

 

In the first Office Action, the Examining Attorney refused registration under Sections 1, 2 and 45 for two reasons.  First, the specimen of use does not show trademark use of the proposed mark; therefore, the proposed mark does not function as a source identifier.  Second, the application does not describe “goods in trade” in connection with which a registration may issue because brochures for its own goods are not considered to be “goods in trade”.  Applicant has responded to the first basis for the refusal; however, for the following reasons, the argument is unpersuasive. 

 

The current specimen is unacceptable as evidence of actual trademark use because it is an advertising brochure and does not show use of the mark on the goods.

 

In applicant’s communication, the applicant avers that the specimens should be considered “catalogs” for specimen purposes.  The applicant pointed to Lands’ End Inc. v. Manbeck, 797 F. Supp. 511, 24 USPQ2d 1314 (E.D. Va. 1992) case in support of this position.  However, the factors mentioned in Lands’ End  do not apply in this matter. 

 

In Lands’ End, the U.S. District Court for the Eastern District of Virginia Board held that the catalog was acceptable because “a customer can identify a listing and make a decision to purchase by filling out the sales form and sending it in or by calling in a purchase by phone.”  Lands’ End, 24 USPEQ2d at 1316.  The Court relied upon the presence of pricing information, a sales form, and solicitations for orders in reaching its decision.

 

As evidence of this analysis, the Trademark Trial and Appeal Board held, in In re MediaShare, that pictures of the goods and sizing information are insufficient, by themselves, to constitute a catalog.  The Board stated: “The specimens submitted by the applicant do not include a sales form, a price for the goods, or any of the other information normally associated with ordering goods via phone or mail.  A phone number, an Internet address and a mailing address are included but no offers to accept order or special instructions on placing orders appear anywhere on the specimen.”  In re MediaShare Corp., 43 USPQ2d 1304, 1306 (TTAB 1997).  The Board also stated: “Many different manufacturers of consumer goods routinely provide performance characteristics and/or statistical data about the use and abilities of their goods in their advertisements.  Such advertisements, even when including a phone number and/or mailing address for the manufacturers of such . . . goods[,] would not be perceived by consumers as catalogs.”  MediaShare, USPQ2d at 1307.

 

Here, although the brochure submitted by the applicant contains the applicant’s address and telephone number, the brochure does not contain pricing information, a sales form, or an invitation to order the applicant’s goods.  Under the Board’s holding in MediaShare, these deficiencies are fatal, rendering the specimen unacceptable.

 

The requirement that applicant submit a specimen showing the mark as used in commerce is MAINTAINED and made FINAL.  37 C.F.R. Section 2.56. Examples of acceptable specimens are tags, labels, instruction manuals, containers or photographs that show the mark on the goods or packaging.  The requirement that applicant 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 is also MAINTAINED and made FINAL.  Jim Dandy Co. v. Siler City Mills, Inc., 209 USPQ 764 (TTAB 1981); 37 C.F.R. Section 2.59(a); TMEP section 905.10.

 

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. Section 2.20. 

 

Applicant also seeks to modify its identification of goods to comprise the heating and cooling systems.  This proposed amendment, which would provide the application with goods in trade, is UNACCEPTABLE.  The is amendment is beyond the scope of the original application, which refers only to brochures as the goods.  Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, the applicant may not amend to include any goods that are not within the scope of goods set forth in the present identification.  Consequently, the application still does not comprise goods that “goods in trade”.

 

For these reasons, the refusal under Sections 1, 2 and 45 are MAINTAINED and made FINAL. 

 

Disclaimer

 

Applicant’s disclaimer of the wording “HEATING & COOLING SYSTEMS” is NOT ACCEPTABLE.  Should applicant choose to respond to the Final Action, applicant must restate the disclaimer using the exact wording in the proposed mark, i.e. use the “&” not “AND”. 

 

Applicant’s Identification of Goods and Classification of Goods

 

As previously explained, the proposed amendment to the identification of goods is UNACCEPTABLE.   The proposed amendment to the identification cannot be accepted because it refers to goods and/or services that are not within the scope of the identification that was set forth in the application at the time of filing.  While the identification of goods and/or services may be amended to clarify or limit the goods and/or services, additions to the identification or a broadening of the scope of the identification are not permitted.  37 C.F.R. §2.71(a); TMEP §§1402.06 et seq. and 1402.07.  Therefore, the proposed amendment to the identification and classification of the goods should be deleted from the identification.

 

Options

 

If applicant fails to respond to this final action within six months of the mailing date, the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond to this final action by: 

 

(1)   submitting a response that fully satisfies all outstanding requirements, if feasible (37 C.F.R. §2.64(a)); and/or

(2)   filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class (37 C.F.R. §§2.6(a)(18) and 2.64(a); TMEP §§715.01 and 1501 et seq.; TBMP Chapter 1200).

 

In certain circumstances, a petition to the Director may be filed to review a final action that is limited to procedural issues, pursuant to 37 C.F.R. §2.63(b)(2).  37 C.F.R. §2.64(a).  See 37 C.F.R. §2.146(b), TMEP §1704, and TBMP Chapter 1201.05 for an explanation of petitionable matter.  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

/ELIZABETH J. WINTER/

Trademark Examining Attorney

Law Office 113

(703) 285-1184; FAX (703) 746-6228

(703) 308-9113 ext. 480 (Thurs.)

 

 

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.