UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE. 

 

 

Serial Number  76/533799

 

The assigned examining attorney has reviewed the referenced application and determined the following.

NO CONFLICTING MARKS

 

The examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02.

 

INFORMALITIES

 

The applicant must respond to the following informalities.

 

Identification of Goods

 

The identification of goods is unacceptable as indefinite. The applicant may identify the goods as electronic signs, or if a system, the parts comprising the system. TMEP §1402.01.  The applicant may adopt the following identification, if accurate: 

 

Electronic signs, in IC 009.

 

Electronic sign system comprised of [indicate the particular parts that comprise the system], in IC 009.

 

Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, the applicant may not amend to include any goods that are not within the scope of goods set forth in the present identification.

 

For additional information regarding acceptable identifications, the Trademark Manual of Acceptable Identifications and Classifications for Goods and Services is accessible on the world wide web at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual.

 

Specimen

 

The specimen is unacceptable as evidence of actual trademark use because it does not show use of the mark on the goods identified in the application, but on what appears to be a promotional brochure.  Additionally, the mark appears to be used with a video processor, and not electronic sign systems. The applicant must submit a specimen showing the mark as used in commerce on the goods or on packaging for the goods.  37 C.F.R. §2.56. 

 

Examples of acceptable specimens are tags, labels, instruction manuals, containers or photographs that show the mark on the goods or packaging.  TMEP §904.04 et seq.  The applicant must verify, with an affidavit or a declaration under 37 C.F.R. §2.20, that the substitute specimen was in use in commerce at least as early as the filing date of the application.  Jim Dandy Co. v. Siler City Mills, Inc., 209 USPQ 764 (TTAB 1981); 37 C.F.R. §2.59(a); TMEP §904.09.  See the attached declaration.

 

Mark Differs on Drawing and Specimen

 

The drawing displays the mark as ACTIVE INPUT.  However, this differs from the display of the mark on the specimen, where it appears as ACTIVE INPUT ARCHITECTURE.  The wording on the specimen appears on the same line in the same font.  The applicant cannot amend the drawing to conform to the display on the specimen because the character of the mark would be materially altered.  37 C.F.R. §2.72(a); TMEP §§807.14, 807.14(a) and 807.14(a)(i).

Therefore, the applicant must submit a substitute specimen that shows use of the mark as it appears on the drawing.  37 C.F.R. §2.51; TMEP §807.14.  The applicant must verify, with an affidavit or a declaration under 37 C.F.R. §2.20, that the substitute specimen was in use in commerce at least as early as the filing date of the application.  37 C.F.R. §§2.59(a) and 2.72(a); TMEP §904.09.  See the attached declaration.

 

 

Disclaimer

 

The applicant must disclaim the descriptive wording “INPUT” apart from the mark as shown. Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a).  The wording is merely descriptive of a feature of the goods, e.g., the systems allow for video inputs, as shown on the current specimen of record consisting of a brochure.

 

A properly worded disclaimer should read as follows:

 

            No claim is made to the exclusive right to use “INPUT” apart from the mark as shown.

 

 

RESPONSE

 

No set form is required for response to this Office action.  The applicant must respond to each point raised.  The applicant should simply set forth the required changes or statements and request that the Office enter them.  The applicant must sign the response.  In addition to the identifying information required at the beginning of this letter, the applicant should provide a telephone number to speed up further processing.

 

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

 

 

/Linda A. Powell/

Trademark Examining Attorney

Law Office 106

(703) 308-9106 ext. 259

(703) 746-8106 fax

 

 

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 E-mail, visit http://www.gov.uspto.report/web/trademarks/tmelecresp.htm 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.

 

To check the status of your application at any time, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.gov.uspto.report/

 

For general and other useful information about trademarks, you are encouraged to visit the Office’s web site at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.