UNITED STATES PATENT AND TRADEMARK OFFICE

Serial Number   76/542016      

NOTICE OF SUSPENSION

This suspension letter responds to the applicant’s communication submitted on August 31, 2005.  The applicant stated that the electronic response system would not allow the applicant to submit a response because the file was deemed abandoned.  The applicant’s file has not been abandoned.  If the applicant has future problems with the electronic forms, the applicant should email TEAS@uspto.gov. 

The prosecution history has been updated to reflect the e-mailed response.  The applicant should be advised that Internet e-mail may not be used to file applications for registration of marks, responses to examining attorneys' Office actions, amendments to allege use under 15 U.S.C. §1051(c), statements of use under 15 U.S.C. §1051(d), requests for extensions of time to file statements of use under 15 U.S.C. §1051(d)(2), affidavits of continued use or excusable nonuse under 15 U.S.C. §1058, affidavits of incontestability under 15 U.S.C. §1065; combined affidavits under 15 U.S.C. §§1058 and 1065, or combined filings under 15 U.S.C. §§1058 and 1059. These documents may be filed electronically using TEAS (see The applicant may telephone the examiner in lieu of submitting a written response.

SUSPENSION PENDING RECEIPT OF THE FOREIGN REGISTRATION CERTIFICATE

The applicant has stated that the foreign registration certificate has not yet matured.  Action on this application is suspended pending receipt of a true copy, a photocopy, a certification, or a certified copy of a foreign registration from the applicant's country of origin.  If the registration is in a foreign language, an English translation must be submitted. The true copy, photocopy, certification, or certified copy of the registration should be forwarded to the Examining Attorney as soon as possible.  If the foreign application is abandoned, the Examining Attorney should be advised.

DUAL BASIS APPLICATIONS ADVISORY MAINTAINED

The applicant has filed asserting a bona fide intention to use the mark in commerce under Trademark Act Section 1(b), 15 U.S.C. §1051(b), and claiming priority under Section 44(d), 15 U.S.C. §1126(d), based on a foreign application.  Under these circumstances, the applicant may rely solely on its intent to use the mark in commerce as the basis for registration and not the expected foreign registration, and still claim the benefit of the priority filing date.  If the applicant chooses to do so, this Office will approve the case for publication without waiting for the applicant to submit the foreign registration.  Of course, the application must be in condition for publication in all other respects.  Moreover, while the application may be approved for publication, the mark will not be registered until an acceptable allegation of use has been filed.

If the applicant wishes to proceed relying on the applicant’s intent to use the mark in commerce as the sole basis for registration, with the claim of priority, the applicant should so advise the examining attorney.  TMEP §§806.02(f) and 806.04(b).

If the applicant does not so indicate, this Office will presume that the applicant wishes to rely on the foreign registration as an additional basis for registration and will expect the applicant to submit a true copy, a photocopy, a certification, or a certified copy of the foreign registration and, if appropriate, an English translation.  It is customary for the translator to sign the translation.  TMEP §§1004.01 and 1004.01(b).

/Tanya Amos/

Trademark Examining Attorney

Law Office 113

(571) 272-9423 Phone

(571) 273-9423 Fax