Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

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  76/546140

 

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

 

SEARCH RESULTS

 

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.

 

INFORMALITIES

 

The applicant has sent in an amended drawing which is a material alteration to the original drawing filed with the application.

 

The general test of whether alterations are material is whether, if the mark were a published mark in an application to register, the change would require republication in order to present the mark fairly for purposes of opposition.  If the proposed amendment to the registered mark would render it sufficiently different as to require republication, it would be tantamount to a new mark appropriate for a new application. In this case, the addition of the design constitutes a new mark.

 

If a design is integrated into a mark and is a distinctive feature necessary for recognition of the mark, then a change in the design would materially alter the mark.  See In re Dillard Department Stores, Inc., 33 USPQ2d 1052 (Comm'r Pats. 1993) (proposed deletion of highly stylized display features of mark "IN•VEST•MENTS" held to be a material alteration); Ex parte Kadane-Brown, Inc., 79 USPQ 307 (Comm'r Pats. 1948) (proposed amendment of "BLUE BONNET" mark to delete a star design and to change the picture of the girl held a material alteration). The situaton in this case is that the original drawing contains a design, which is integrated with the wording ATKLANTIC AUTOMOTIVE. The design of the tire tread is not spaced above or below the words but rather as a unitary part of the mark.

 

The proposed alteration to the mark would require republication of the mark. Accordingly the amendment is refused as a material alteration to the original drawing.

 

Please note that the applicant has a current registration for BIOSITE and design for the same goods and services in this application. The Patent and Trademark Office will not issue duplicate registrations.  TMEP §703.

 

2. The drawing displays the mark as BIOSITE AND DESIGN (typed wording).  However, this differs from the display of the mark on the specimen, where it appears as BIOCITE.  The applicant must

 

(1) Submit a new drawing of the mark that agrees with the specimen

 

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).

 

 

 

/Lesley LaMothe/

Trademark Attorney

Law Office 103

703-308-9103 ext 487

e-mail- lesley.lamothe@uspto.gov

fax- 703-746-8103

 

 

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.

 

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.