UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

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  76/538382

 

FIRST OFFICE ACTION

 

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

 

Search of Office Records

 

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.

 

Failure to Function as a Trademark Refusal – Improper Specimen

 

The examining attorney refuses registration because the proposed mark does not function as a trademark.  Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051, 1052 and 1127.  The proposed mark neither identifies and distinguishes the goods of the applicant from those of others nor indicates their source.  In Re Remington Products Inc., 3 USPQ2d 1714 (TTAB 1987).  TMEP §§1202 et seq.  The proposed mark does not function as a trademark  because the specimen submitted does not show use of the mark for any goods in the application.  Accordingly, the proposed mark cannot identify and distinguish the applicant’s identified goods from those of others nor indicate their source. 

 

The specimen is unacceptable as evidence of actual trademark use because it comprises an advertising brochure for the applicant’s goods and does not show use of the mark on the applicant’s goods.  Invoices, announcements, order forms, bills of lading, leaflets, brochures, publicity releases and other printed advertising material generally are not acceptable specimens for goods.  In re Bright of America, Inc., 205 USPQ 63 (TTAB 1979); TMEP §§904.05 and 904.07.  See In re Ultraflight Inc., 221 USPQ 903 (TTAB 1984).  The applicant must submit a specimen showing the mark as it is used in commerce on the goods.  37 C.F.R. §2.56.  Examples of acceptable specimens are tags, labels, instruction manuals, containers, and 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.  37 C.F.R. §2.59(a); TMEP §904.09.

 

The applicant should note that if it submits an acceptable specimen showing use of the mark with the goods, this refusal will be withdrawn.

 

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.

 

Substituting a Basis

 

If the applicant cannot comply with the requirement for a specimen of use for the Section 1(a)  basis asserted, the applicant may substitute a different basis for filing if the applicant can meet the requirements for the new basis.  See TMEP §§806.03 et seq.

 

In this case, the applicant may wish to amend the application to assert a Section 1(b) basis. To base the application on a bona fide intention to use the mark in commerce, the applicant must submit the following statement:

 

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

 

This statement must be must be verified, i.e., supported either by an affidavit or by a 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)(i); TMEP §806.01(b).

 

The applicant should note that if it amends to a Section 1(b) filing basis for the goods, the failure to function as a trademark refusal under Sections 1, 2 and 45 will be withdrawn.

 

Informality

 

If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informality.

 

Disclaimer

 

The examining attorney notes the submitted disclaimer of THE SCOULAR COMPANY.  However, the disclaimer of SCOULAR is unnecessary and should be withdrawn.  Only a disclaimer of the entity designation COMPANY is required.  TMEP §1213.03(d).  A proper disclaimer for this application should read as follows.

 

No claim is made to the exclusive right to use COMPANY apart from the mark as shown.

 

Responding to this Office Action

 

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. 

 

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

 

 

 

 

/Stacy B. Wahlberg/

Trademark Attorney

Law Office 113

(703) 308-9113 ext. 206

LO Fax (703) 746-8113

 

 

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.