To: | Separation Technology, Inc. (denise.riemann@fishersci.com) |
Subject: | TRADEMARK APPLICATION NO. 76512229 - ULTRACRIT - 73473 |
Sent: | 8/25/2006 6:05:18 PM |
Sent As: | ECOM103@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/512229
APPLICANT: Separation Technology, Inc.
|
|
CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
|
MARK: ULTRACRIT
|
|
CORRESPONDENT’S REFERENCE/DOCKET NO: 73473
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.
|
MAILING/E-MAILING DATE INFORMATION: If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.
Serial Number 76/512229
The assigned examining attorney has reviewed the statement of use filed on August 14, 2006 and has determined the following.[1]
Applicant must submit (1) a substitute specimen showing the mark as it is used in commerce on the goods or on packaging for the goods, and (2) a statement that “the substitute specimen was in use in commerce prior to the expiration of the time allowed applicant for filing a statement of use,” verified with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20. 37 C.F.R. §§2.56, 2.59(b)(2) and 2.88(b)(2); TMEP §§904.09 and 1109.09(b).
The specimen submitted does not show proper trademark use because the mark as it appears in the catalog or website display while shown in close proximity to a picture of the
goods, does not include the necessary ordering information or link to ordering information. A printed or web catalog or similar specimen is only acceptable to show
trademark use if it includes (1) a picture of the relevant goods, (2) the mark appearing sufficiently near the picture of the goods so as to associate the mark with the goods, and (3) information
necessary to order the goods (e.g., sales form, price list, instructions for ordering, etc.). In re Dell Inc., 71 USPQ2d 1725 (TTAB 2004); Lands’ End Inc.
v. Manbeck, 797 F. Supp. 511, 24 USPQ2d 1314 (E.D. Va. 1992); In re MediaShare Corporation, 43 USPQ2d 1304 (TTAB 1997); TMEP §§904.06(a) and (b).
While the picture submitted may also show the mark on the goods, the mark is not sufficiently legible on the goods in the facsimile format submitted. In other words,
if applicant has a clear picture showing the mark on the goods, that may be an acceptable alternative specimen.
Examples of acceptable specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the goods or packaging, or displays associated with the goods at their point of sale. TMEP §§904.04 et seq.
Invoices, announcements, order forms, bills of lading, leaflets, brochures, publicity releases and other printed advertising material, while normally acceptable for showing use in connection with services, generally are not acceptable specimens for showing trademark use in connection with goods. In re Bright of America, Inc., 205 USPQ 63 (TTAB 1979); See In re Ultraflight Inc., 221 USPQ 903 (TTAB 1984); TMEP §§904.05 and 904.07.
The following is a properly worded declaration under 37 C.F.R. Section 2.20. At the end of the response, the applicant should insert the declaration signed by someone 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 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)
Pending an adequate response to the above, registration is refused because the specimen of record does not show use of the proposed mark as a trademark. Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051, 1052 and 1127; TMEP §§904.11 and 1202 et seq.
/M. Catherine Faint/
Trademark Attorney
USPTO Law Office 103
phone: (571) 272-9274
fax: (571) 273-9103
Catherine.Faint@uspto.gov
HOW TO RESPOND TO THIS OFFICE ACTION:
STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.
VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.
GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.
[1] Applicant appears to have filed essentially the same response via facsimile twice on the same day. One of those filed via facsimile, however, is incomplete as it does not contain the specimen. That does not affect this refusal since the other does contain the specimen.