To: | The Scoular Company (pduffy@fraserstryker.com) |
Subject: | TRADEMARK APPLICATION NO. 76538383 - IFI INDUSTRIAL FOOD INGREDIENTS - N/A |
Sent: | 2/24/04 4:23:09 PM |
Sent As: | ECom113 |
Attachments: | Attachment - 1 Attachment - 2 |
UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/538383
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 ecom113@uspto.gov
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MARK: IFI INDUSTRIAL FOOD INGREDIENTS
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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 76/538383
The assigned examining attorney has reviewed the referenced application and determined the following.
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.
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.
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.
If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informality.
The examining attorney notes the assignment of Registration No. 837,625. Thus, if the applicant is the owner of Registration No. 837,625, the applicant must submit a claim of ownership. 37 C.F.R. §2.36; TMEP §812.
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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.