UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/518660
APPLICANT: Wilson Sporting Goods Co.
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: UNDERGLASS
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CORRESPONDENT’S REFERENCE/DOCKET NO: UNDERGLASS
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.
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Serial Number 76/518660
The assigned trademark examining attorney has reviewed the statement of use and has determined the following.
SPECIMEN UNACCEPTABLE
The mark as depicted on the drawing disagrees with the mark as it appears on the specimen, and clarification is required. Applicant must submit a substitute specimen that shows use of the mark as it appears on the drawing and include a statement that “the substitute specimen was in use in commerce prior to the expiration of the time allowed to 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. §§2.51, 2.59(b) and 2.72(b); TMEP §§807.14 and 904.09
In the present case, the drawing displays the mark as the typed word UNDERGLASS, and the specimen shows the mark as the words UNDER and GLASS separated by a small circle design which is followed by the word TECHNOLOGY in the same font, letter size and color. 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, 807.14(a) and 807.14(a)(i). In addition, applicant may not withdraw the statement of use. 37 CFR §2.88(g).
RESPONSE
If applicant has any questions regarding any of the issues set forth in this Office action, applicant may telephone the trademark examining attorney.
NOTICE: TRADEMARK OPERATION RELOCATING OCTOBER AND NOVEMBER 2004
The Trademark Operation is relocating to Alexandria, Virginia, in October and November 2004. Effective October 4, 2004, all Trademark-related paper mail (except documents sent to the Assignment Services Division for recordation, certain documents filed under the Madrid Protocol, and requests for copies of trademark documents) must be sent to:
Commissioner for Trademarks
P.O. Box 1451
Alexandria, VA 22313-1451
Applicants, registration owners, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at www.uspto.gov.
/Douglas M. Lee/
Trademark Examining Attorney
Law Office 108
U.S. Patent and Trademark Office
Tel. (571) 272-9343
Fax. (571) 273-9343
How to respond to this Office Action:
You may respond formally using the Office's Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://eteas.gov.uspto.report/V2.0/oa242/WIZARD.htm and follow the instructions therein, but you must wait until at least 72 hours after receipt if the office action issued via e-mail). PLEASE NOTE: Responses to Office Actions on applications filed under the Madrid Protocol (Section 66(a)) CANNOT currently be filed via TEAS.
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.