UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/516966
APPLICANT: Akzo Nobel Coatings International B.V.
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CORRESPONDENT ADDRESS: LAINIE E. PARKER AKZO NOBEL INC. 7 LIVINGSTONE AVENUE DOBBS FERRY NY 10522
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514
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MARK: TRILUX
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CORRESPONDENT’S REFERENCE/DOCKET NO: 13739US1 TRI
CORRESPONDENT EMAIL ADDRESS:
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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.
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Serial Number 76/516966
This letter responds to the applicant’s communication filed on April 2, 2004. Therein, the applicant: 1) submitted a substitute specimen; and 2) submitted arguments in favor of registration over the Section 2(d) refusal.
The Section 2(d) refusal is maintained and CONTINUED. Mere licensing is not enough to overcome the likelihood of confusion. There must be an indication of ownership and/or a relationship between the licensee and licensor. TMEP §§1201.03(f), 1201.07(b), and 1201.07(b)(iv).
The submitted declaration does not contain language averring to the truth of the facts stated. When a declaration is used in lieu of an oath, the party must include in place of the oath (jurat) the statement that “all statements made of his own knowledge are true and all statements made on information and belief are believed to be true.” Preferably, this language is placed at the end of the document. TMEP §804.01(b). The applicant must submit a substitute declaration containing the required wording to support the substitute specimen.
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. 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; 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; that the substitute specimens were in use in commerce at least as early as the filing date of the application; 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.
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Signature
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Typed Name/Position
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Date
Please note: The substitute specimen itself is acceptable.
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
/Kelly F. Boulton/
Trademark Attorney
Law Office 102
(703) 308-9102 ext. 236
Kelly.Boulton@uspto.gov (informal)
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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.