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

 

This letter responds to the applicant's communication filed on June 28, 2004.  The applicant provided the required disclaimer.  The applicant amended the identification of goods.  The amendment is not acceptable for the reasons discussed below.  The requirement for an acceptable identification of goods that is within the scope of the goods originally described is CONTINUED.  The specimen was refused because it did not show use on the goods identified in the application, and because the mark on the specimen differed from the mark on the drawing page of the application.  The applicant presented arguments in response to these findings and requested amending the application to an intent-to-use basis.  The applicant did not meet the requirements for an amended basis. The arguments are addressed below.  The requirements for a specimen of use showing use of the mark on the identified goods, and showing the mark in the drawing are CONTINUED.

 

Identification of Goods and Specimen Analysis

 

The original identification of goods, “electronic sign system,” is unacceptable as indefinite because the applicant must describe the goods comprising the sign system. TMEP §1402.01.  The applicant proposed a new identification, “component of video processor with LED display which accepts multiple video inputs from different sources and controls different channels.”  The applicant replaces a “sign system” with “video processor components.” The proposed amendment is unacceptable because it exceeds the scope of the goods in the original identification. 37 C.F.R. §2.71(a); TMEP §1402.06.  The applicant argues that LEDs are a type of electronic sign. While it is true that LED technology may be employed in signage, not every display of images or data are signs.  A sign is defined as follows:

sign  noun

a. A displayed structure bearing lettering or symbols, used to identify or advertise a place of business: a motel with a flashing neon sign outside. b. A posted notice bearing a designation, direction, or command: an EXIT sign above a door; a traffic sign.[1]

 The specimen of record does not show use of the processor in the context of signage, but rather the wording “Active Input Architecture” appears to allow telescoping in and out from the image that is the subject of a video recording, or capturing images in varying size formats.  The LED appears to be part of the video processor (called V-LINK), but there is no association between the mark “ACTIVE INPUT” and the described LED display referenced in the specimen. There is no picture or reference to an LED display on the pages of the specimen that bear the words in the mark. Furthermore, the wording “Active Input Architecture” does not appear to identify even a good, but a process that is associated with the “V-Link processor.”  This is consistent with the applicant’s use of the “SM” (service mark symbol) that appears after the words “ACTIVE INPUT” in the specimen. The applicant may adopt the following identification, if accurate: 

 

Electronic sign systems comprising [identify the components of the sign 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 Not Acceptable

 

It is noted here, again, that the specimen of record does not show use with the identified goods, e.g., electronic sign systems.  The specimen is unacceptable as evidence of actual trademark use because the mark is shown on advertising material, and not on the goods themselves, or packaging for the goods.  The applicant must submit a specimen showing the mark as used in commerce on the goods or packaging.  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.

 

Overcoming the Refusal by Substituting a Basis

 

The applicant has requested amendment to a Section 1(b) filing basis to overcome the specimen refusal, but has not met the requirements for filing under this section of the Trademark Act.  The specimen refusal is CONTINUED pending a proper amendment to the filing basis.  The requirements for substituting a Section 1(b) basis are discussed below.

 

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 applicant argues that the wording ARCHITECTURE is generic.  That determination is not made for a component of a video processor, as the goods in this application are identified as an “electronic sign system.”  The wording ARCHITECTURE is not generic for signage.  If the applicant provides substitute specimens for the goods in this application, the applicant must show use of the mark in the drawing.  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)(i). 

Applicant may not submit an amended drawing to conform to the display on the specimen because the character of the mark would be materially altered, i.e., the mark on the specimens creates a different commercial impression from the mark on the drawing.

 

Therefore, applicant must do one of the following:

 

(1)   submit a substitute specimen showing use of the mark as it appears in the drawing on the identified goods or the packaging for those goods, with a statement that “the substitute specimen was in use in commerce at least as early as the filing date of the application,” verified with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20; 37 C.F.R. §§2.59(a) and 2.72(a); TMEP §904.09; (See attached statement with declaration), or

 

(2)   amend the basis to Section 1(b) and satisfy all the requirements for this new basis.  37 C.F.R. §2.51; TMEP §807.14.

 

Amending to as Section 1(b) Basis

The applicant has requested amendment to an Intent-to-Use, Section 1(b) Filing Basis, but has not met the requirements for filing under this provision of the Trademark Act.  Where an application is based on a bona fide intention to use the mark in commerce, applicant must submit the following statement:

 

Applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application since the filing date of the application.

 

This statement must be verified with a notarized affidavit or a signed declaration under 37 C.F.R. §§2.20 and 2.33.  Trademark Act Section 1(b), 15 U.S.C. §1051(b); 37 C.F.R. §2.34(a)(2); TMEP §806.01(b).  See the attached statement with declaration. 

 

The applicant may overcome the specimen refusals by meeting the requirements for a Section 1(b) filing basis.  This amendment to basis will not overcome the requirement for an acceptable identification of goods that is within the scope of the original identification.

 

 

RESPONSE

 

Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.

 

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

 

Change in USPTO Trademark Contact Information

 

The USPTO Trademark Operations will be moving to the new Alexandria, Virginia campus in October and November 2004.  During that time, you are strongly encouraged to communicate with the USPTO through the Trademark Electronic Application System (TEAS) which can be found at www.uspto.gov .

 

Effective October 4, 2004, all Trademark-related paper mail must be sent to:

 

                        Commissioner for Trademarks

                        P.O. Box 1451

                        Alexandria, VA  22313-1451

 

My Law Office will move on November 1, 2004.  To reach me by phone after that date call (571) 272-9327.

 

To submit a fax response to this Office action after that date, send your response to the Law Office fax number, namely (571) 273-9106.

 

 

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.

 

 

 

 

 

 

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.

 

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.