UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.

 

ISSUE/MAILING DATE: 7/1/2009

 

 

PLEASE NOTE:  The Office has reassigned this application to the undersigned trademark examining attorney.

 

The statement of use has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

1.         Amended Identification of Goods

 

a.         The identification of goods in the statement of use is unacceptable because, although the applicant amended the identification to delete the majority of its goods, the remaining identification designates goods that are broader in scope than the identification that was set forth in the application at the time of filing or as expressly amended.  The applicant also added goods that do not appear in the notice of allowance.  While an application may be amended to clarify or limit the identification, additions that broaden the identification are not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07. 

 

The following goods are identified in the original application or in the application as amended:  “PRINTED PUBLICATIONS, NAMELY, SERIES OF BOOKS, NOVELS, AND MAGAZINES IN THE FIELDS OF ENTERTAINMENT IN THE NATURE OF TELEVISIONS SERIES, MOTION PICTURES AND CARTOONS; ADDRESS BOOKS; CALENDARS; EXERCISE BOOKS; HEAT APPLIED APPLIQUES MADE OF PAPER; DECALS AND TEMPORARY TATTOOS; PAPER PARTY SUPPLIES, NAMELY, PAPER HATS, PAPER NAPKINS, PLACE MATS, PAPER GIFT WRAP AND PAPER RIBBONS; PAPER TABLE COVERS; PAPER BAGS; COMIC BOOKS; GRAPHIC NOVELS; DIARIES; SCRAPBOOKS; SKETCHBOOK ALBUMS; MEMO PADS; PHOTO ALBUMS; FOLDERS; STICKERS; STICKER ALBUMS; WALL POSTERS; POSTER BOOKS; POSTCARDS; STENCILS; TRADING CARDS; PRINTED INSPIRATIONAL CARDS; GREETING CARDS; UNMOUNTED COMPUTER GENERATED PHOTOGRAPHS; PAPER BOXES FOR BOOKS; PENNANTS MADE OF PAPER; AND DECORATIVE PAPER PARTY HORNS.” 

 

The following similar but more broadly described goods are identified in the statement of use:  “Printed publications, namely, series of books and novels in the fields of relationships and entertainment and magazines in the fields of entertainment, relationships and cartoons; exercise cards; diaries; memo pads; folders; stickers; printed inspirational cards; and card games.”  The goods that exceed the goods identified in the notice of allowance are bolded in the foregoing identification.

 

Applicant must amend the identification of goods in the statement of use to conform to the identification in the notice of allowance, as amended. 

 

b.         Applicant may adopt the following identification of goods in International Class 16, if accurate:  Printed publications, namely, series of books, novels, and magazines in the fields of entertainment in the nature of television series, motion pictures, and cartoons; diaries; memo pads; folders; stickers; printed inspirational cards.  See TMEP §1402.01.

 

2.         Mark Differs on Drawing and Specimens – Substitute Specimen Required

 

The mark on the specimens disagrees with the mark on the drawing.  In this case, the specimen displays the mark as MARS VENUS AND BEYOND, while the drawing shows the mark as MARS VENUS.

 

A statement of use must include a specimen showing the applied-for mark in use in commerce for each class of goods specified in the statement of use.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.56(a), 2.88(b)(2); TMEP §§904, 1109.09(b).  The mark on the drawing must be a substantially exact representation of the mark as used on the specimen.  37 C.F.R. §2.51(b); TMEP §807.12(a); see 37 C.F.R. §2.72(b)(1).

 

The drawing of the mark can be amended only if the amendment does not materially alter the mark as originally filed.  37 C.F.R. §2.72(a)(2), (b)(2); TMEP §§807.12(a), 807.14 et seq.  However, amending the mark in the drawing to conform to the mark on the specimens would be a material alteration in this case because the mark on the specimens creates a different commercial impression from the mark on the drawing.  Specifically, the additional wording “AND BEYOND” changes the overall commercial impression of the mark.

 

Therefore, applicant must submit the following:

 

(1)  A substitute specimen showing use in commerce of the mark on the drawing.  See 37 C.F.R. §2.59(b)(1); TMEP §904.05.; and

 

(2)  The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §§2.20, 2.33: “The substitute specimen was in use in commerce prior to the expiration of the time allowed applicant for filing a statement of use.”  See 37 C.F.R. §2.59(b)(2); TMEP §904.05.  If submitting a specimen requires an amendment to the dates of use, applicant must also verify the amended dates.  37 C.F.R. §2.71(c); TMEP §904.05.

 

Examples of specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale.  See TMEP §§904.03 et seq. 

 

Pending receipt of a proper response, registration is refused because the specimen does not show the applied-for mark in use in commerce as a trademark.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.56(a), 2.88(b)(2); TMEP §§904, 904.07(a).

 

Applicant may not withdraw the statement of use.  37 C.F.R. §2.88(g); TMEP §1109.17.

 

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

 

A prompt response to this Office action will expedite the handling of this matter.

 

 

 

/Barbara A. Gaynor/

Barbara A. Gaynor

Trademark Examining Attorney

Law Office 115

571-272-9164

 

 

 

RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the form at http://www.uspto.gov/teas/eTEASpageD.htm, waiting 48-72 hours if applicant received notification of the Office action via e-mail.  For technical assistance with the form, please e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned examining attorney.  Do not respond to this Office action by e-mail; the USPTO does not accept e-mailed responses.

 

If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response.  Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.

 

STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov.  When conducting an online status check, print and maintain a copy of the complete TARR screen.  If the status of your application has not changed for more than six months, please contact the assigned examining attorney.