UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

Serial Number  76/524116

 

This letter responds to the applicant’s communication filed on February 10, 2005.

 

Specimen

The mark as depicted on the drawing disagrees with the mark as it appears on the specimen, and clarification is required.  Specifically, the drawing displays the mark as NEW ORLEANS’ ORIGINAL, and the specimen shows the mark as THE ONE AND ONLY NEW ORLEANS ORIGINAL.  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 and 807.14(a)(i).

 

Applicant must do one of the following:

 

(1)   submit a substitute specimen that shows use of the mark as it appears on the drawing, with a statement that “the substitute specimen was in use in commerce prior to filing the amendment to allege use,” verified with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20; 37 C.F.R. §§2.59(b) and 2.72(b); or

 

(2)   withdraw the amendment to allege use.  37 C.F.R. §2.51; TMEP §807.14.

 

Refusal

Registration was refused under Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1), because the subject matter for which registration is sought is merely descriptive of the identified goods.

 

Since the specimen is unacceptable, the amendment to allege use cannot be accepted.  Consequently, the refusal is continued.

 

 

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

 

/Linda M. King/

Trademark Attorney

Law Office 116

571-272-9180

Linda.King@uspto.gov

 

 

NOTICE:  FEE CHANGE   

 

Effective January 31, 2005 and pursuant to the Consolidated Appropriations Act, 2005, Pub. L. 108-447, the following are the fees that will be charged for filing a trademark application:

 

(1) $325 per international class if filed electronically using the Trademark Electronic Application System (TEAS); or 

 

(2)   $375 per international class if filed on paper

 

These fees will be charged not only when a new application is filed, but also when payments are made to add classes to an existing application. If such payments are submitted with a TEAS response, the fee will be  $325 per class, and if such payments are made with a paper response, the fee will be $375 per class.

 

The new fee requirements will apply to any fees filed on or after January 31, 2005.

 

NOTICE:  TRADEMARK OPERATION RELOCATION

 

The Trademark Operation has relocated to Alexandria, Virginia.  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, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at http://www.gov.uspto.report/teas/index.html.

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond formally using the Office’s Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://www.gov.uspto.report/teas/index.html and follow the instructions, but if the Office Action issued via email you must wait 72 hours after receipt of the Office Action to respond via TEAS).
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above and include the serial number, law office number and examining attorney’s name in your response.

 

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.