UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/534853
APPLICANT: AWI Licensing Company
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: GENERATIONS
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
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 76/534853
This letter responds to the applicant's communication filed on March 7, 2005.
statement of use - final action
The applicant applied to register the mark GENERATIONS for “hardwood flooring.”
After the mark was published for opposition in the Official Gazette, a Notice of Allowance issued, advising the applicant to submit a Statement of Use (SOU). On December 13, 2004, the applicant submitted a timely SOU.
On January 25, 2005, the examining attorney required the applicant to submit an acceptable specimen showing use of the mark in connection with the goods.
In its response, the applicant objected to the examining attorney’s requirement.
For the reasons stated below, the requirement for an acceptable specimen is maintained and made FINAL.
In the Statement of Use, the applicant stated that it was submitting a “product label” as its specimen. However, the examining attorney rejected the enclosed specimen because it was not a label but rather appeared to be advertising for the goods. The examining attorney advised that examples of acceptable specimens for goods include tags, labels, instruction manuals or containers that feature the mark.
In its response, the applicant did not submit a substitute specimen. Instead, the applicant states that the original specimen is a “display associated with the goods” and also that the specimen is “a reproduction of a label adhered to the back of a product sample of the goods displayed at point of purchase.”
The applicant’s explanation is confusing. It is not clear whether the applicant’s specimen is a label used on the goods or if the specimen is a point-of-purchase display. The applicant must more precisely explain the nature of the specimen.
PLEASE NOTE, if the applicant intends the specimen to be a point-of-purchase display, the specimen by itself is not acceptable. In order to properly evaluate the acceptability of this specimen, applicant must submit a clear photograph showing how the specimen is displayed in connection with the goods. 37 C.F.R. §2.61(b); TMEP §904.06. See In re Ancha Electronics Inc., 1 USPQ2d 1318 (TTAB 1986).
For these reasons, the requirement for an acceptable specimen is maintained and made FINAL.
Options
If the applicant fails to respond to this final action within six months of the mailing date, the application will be abandoned. 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a). The applicant may respond to this final action by:
(1) submitting a response that fully satisfies all outstanding requirements, if feasible (37 C.F.R. §2.64(a)); or
(2) filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class (37 C.F.R. §§2.6(a)(18) and 2.64(a); TMEP §§715.01 and 1501 et seq.; TBMP Chapter 1200).
In certain circumstances, a petition to the Director may be filed to review a final action that is limited to procedural issues, pursuant to 37 C.F.R. §2.63(b)(2). 37 C.F.R. §2.64(a). See 37 C.F.R. §2.146(b), TMEP §1704, and TBMP Chapter 1201.05 for an explanation of petitionable matter. The petition fee is $100. 37 C.F.R. §2.6(a)(15).
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
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.
/Gwen P. Stokols/
Trademark Examining Attorney
Law Office 102
Telephone: 571-272-9263
Fax: 571-273-9263
HOW TO RESPOND TO THIS OFFICE ACTION:
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.