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

 

This letter responds to the applicant’s communication filed on October 1, 2004.

 

FINAL REFUSAL

 

The applicant’s attorney responds to the Examining Attorney’s refusal to accept an amended drawing which is clearly a material alteration of the original drawing, by stating that the “examining attorney appears confused.”  To the contrary, the examining attorney is very familiar with the case law on this issue. While it is unfortunate that the applicant’s attorney “inadvertently” typed the wording “BIOSITE and design” on the drawing page instead of including the design image” this is not an excuse to allow a material alteration to the mark. Moreover, the applicant’s attorney attempts to blame the trademark office by claiming that she “suspects a computer scanning problem.” In addition, the applicant’s attorney claims that she sent in a preliminary amendment of which there is none on record.

 

As clearly stated in the previous office action and repeated herein for the convenience of the applicant’s attorney, 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.

 

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 situation 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 because it includes a design image. Accordingly the amendment is refused as a material alteration to the original drawing.

 

Also, the applicant’s attorney points out that the applicant currently has two registrations for the word mark BIOSITE (1,796,567 and 1,794,618). There is no inquiry or doubt as to those registrations. The relevant  issue here is that the applicant’s attorney wishes to overcome an error in her submission of the original drawing with a new drawing constituting a material alteration.

 

The refusal is maintained and made FINAL.

 

With respect to the specimen, the drawing on the specimen does not match the mark in the original drawing. Obviously, if the examining attorney will not accept the amended drawing because it constitutes a material alteration, she cannot accept the specimen. Therefore the requirement that the applicant submit a specimen which matches the original drawing is also made FINAL.

 

 

Applicant may respond to this final action by either:  (1) submitting a timely response that fully satisfies any outstanding requirements, if feasible; or (2) timely filing an appeal of this final action to the Trademark Trial and Appeal Board.  37 C.F.R. §2.64(a); TMEP §715.01.  If applicant fails to respond within six months of the mailing date of this refusal, the application will be abandoned.  37 C.F.R. §2.65(a).

 

 

 

 

NOTICE:  TRADEMARK OPERATION RELOCATING OCTOBER AND NOVEMBER 2004

 

The Trademark Operation is relocating to Alexandria, Virginia, in October and November 2004.  Effective October 4, 2004, all Trademark-related paper mail (except documents sent to the Assignment Services Division for recordation, certain documents filed under the Madrid Protocol, and requests for copies of trademark documents) must be sent to:

 

Commissioner for Trademarks

P.O. Box 1451

Alexandria, VA  22313-1451

 

Applicants, registration owners, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at www.uspto.gov.

 

 

 

/Lesley LaMothe/

Trademark Attorney

Law Office 103

571-272-9184

e-mail- lesley.lamothe@uspto.gov

 

 

 

How to respond to this Office Action:

 

You may respond formally using the Office's Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://eteas.gov.uspto.report/V2.0/oa242/WIZARD.htm and follow the instructions therein, but you must wait until at least 72 hours after receipt if the office action issued via e-mail).  PLEASE NOTE: Responses to Office Actions on applications filed under the Madrid Protocol (Section 66(a)) CANNOT currently be filed via TEAS.

 

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.