| To: | The Scoular Company (pduffy@fraserstryker.com) |
| Subject: | TRADEMARK APPLICATION NO. 76538382 - THE SCOULAR COMPANY - N/A |
| Sent: | 6/1/04 1:11:19 PM |
| Sent As: | ECom113 |
| Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/538382
APPLICANT: The Scoular Company
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CORRESPONDENT ADDRESS: PATRICK J. DUFFY FRASER STRYKER LAW FIRM 500 ENERGY PLAZA 409 SOUTH 17TH STREET OMAHA NE 68102
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514
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MARK: THE SCOULAR COMPANY
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
CORRESPONDENT EMAIL ADDRESS: pduffy@fraserstryker.com |
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 76/538382
This letter responds to the applicant’s communication filed on April 21, 2004. Please note that all issues not discussed in this office action have been resolved.
The substitute specimen submitted is of an acceptable type. However, the specimen and drawing do not agree. Thus, the applicant should note the following.
The drawing displays the mark as THE SCOULAR COMPANY and design. However, this differs from the display of the mark on the specimen, where it appears as SCOULAR and design. The applicant must either:
(1) submit a new drawing of the mark that agrees with the specimen; or
(2) submit a substitute specimen that shows use of the mark shown in the drawing.
37 C.F.R. §2.51; TMEP §§807.14 and 807.14(a)(i). The applicant may not amend the drawing if the amendment would materially alter the character of the mark. 37 C.F.R. §2.72(a); TMEP §807.14(a). Here, the applicant should note that deleting the words THE and COMPANY from its drawing would not be a material alteration and would be acceptable.
If a substitute specimen is submitted, 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.
The applicant should note that if it amends its drawing to delete the word COMPANY then it must withdraw the disclaimer of that term.
Continuation of the Failure to Function as a Trademark Refusal
The refusal under Sections 1, 2, and 45 of the Trademark Act pertaining to the original specimen is hereby maintained and CONTINUED. The applicant should note that upon resolution of the specimen-drawing agreement issue regarding the substitute specimen discussed above, this refusal will be withdrawn.
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 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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.