UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/554831
APPLICANT: Penn Elcom, Inc.
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CORRESPONDENT ADDRESS: ROBERT D. HORNBAKER FREILICH, HORNBAKER & ROSEN 10960 WILSHIRE BOULEVARD, SUITE 1220 LOS ANGELES, CALIFORNIA 90024-3702
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514
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MARK:
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CORRESPONDENT’S REFERENCE/DOCKET NO: 011
CORRESPONDENT EMAIL ADDRESS:
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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 76/554831
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.
Specimen
The specimen is unacceptable as evidence of actual trademark use because it appears to be advertising material. Invoices, announcements, order forms, bills of lading, leaflets, brochures, publicity releases and other printed advertising material generally are not acceptable specimens. 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. 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 statement supporting use of the substitute specimen must read as follows:
The substitute specimen was in use in commerce at least as early as the filing date of the application.
The applicant must sign this statement either in affidavit form or with a declaration under 37 C.F.R. Section 2.20.
The following is a properly worded declaration under 37 C.F.R. Section 2.20. At the end of the response, the applicant should insert the declaration signed by an individual authorized to sign the declaration.
The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. 1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that the facts set forth in this application are true; all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.
_____________________________
(Signature)
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(Print or Type Name and Position)
_____________________________
(Date)
The applicant may wish to consult the on-line identification manual on the Patent and Trademark Office homepage for a listing of acceptable goods and services. The web site address is as follows:
http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/
The wording “braces,” “brackets,” “catch plates,” “corner protectors” “extrusions,” “grilles,”“guides” and “modules” in the identification of goods is unacceptable as indefinite. The applicant must amend the identification to specify the industry or field in which the goods are used. TMEP §1402.01.
The wording “connectors” in the identification of goods is unacceptable as indefinite. The applicant may amend this wording to “metal pipe connectors,” if accurate. TMEP §1402.01.
The nature of the goods identified as “dishes” on which the applicant uses the mark is not clear from the present record. The applicant must submit samples of advertisements or promotional materials. If such materials are not available, the applicant must submit a photograph of the goods and describe their nature, purpose and channels of trade. 37 C.F.R. §2.61(b); TMEP §§814 and 1402.01(d).
The wording “fasteners” in the identification of goods is unacceptable as indefinite. The applicant may amend this wording to “metal fasteners, namely, [specify the common commercial name e.g. bolts, nails, rivets etc.],” if accurate. TMEP §1402.01.
The wording “plates” in the identification of goods is unacceptable as indefinite because the applicant did not specify the type of plate. The applicant may amend this wording to “metal [specify the type of plate e.g. mail, name] plate,” if accurate. TMEP §1402.01.
The wording “rack and rack parts” in the identification of goods is unacceptable as indefinite because the applicant did not specify the type of racks. The applicant may amend this wording to “[specify e.g. bicycle] racks and parts therefor,” if accurate. TMEP §1402.01.
The wording “stays” in the identification of goods is unacceptable as indefinite. The applicant may amend this wording to “metal fencing stays,” if accurate. TMEP §1402.01.
The wording “steel feet” in the identification of goods is unacceptable as indefinite because the applicant did not specify the field of use of the goods. The applicant may amend this wording to “steel feet for [e.g. use in stationary chairs],” if accurate. TMEP §1402.01.
The wording “trusses and truss sections” in the identification of goods is unacceptable as indefinite. The applicant may amend this wording to “metal roof trusses and roof truss sections,” if accurate. TMEP §1402.01.
The wording “washers” in the identification of goods is unacceptable as indefinite. The applicant may amend this wording to “metal hardware, namely, washers,” if accurate. TMEP §1402.01.
The applicant may adopt the following identification of goods, if accurate:
International Class 006: Metal hardware, namely, back plates for handles, braces for [specify the field/use e.g. roofing], bolts, brackets for [specify field/use e.g. for securing pictures to the wall], casters, catch plates for [specify the field/use], castings, clamps, metal pipe connectors, wall corner protectors, dishes for [specify the field/use], fasteners, namely, [specify the common commercial name e.g. bolts, nails, rivets etc.], handles for boxes and cabinets, extrusions for [specify the field/use], grilles for [specify the field/use], guides for [specify the field/use], hinges, latches, locks, modules for [specify the field/use], nuts, [specify the type e.g. fence, door, ceiling] panels, [specify type e.g. name, mail] plates, [specify type e.g. bicycle, hat] racks and parts therfor, rivets, screws, metal fencing stays, steel feet for [specify the field/use], metal roof trusses and truss sections, and washers.
Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, the applicant may not amend to include any goods that are not within the scope of goods set forth in the present identification.
The drawing is not acceptable because it will not reproduce satisfactorily. The applicant must submit a new drawing showing the mark clearly and conforming to 37 C.F.R. Section 2.52. TMEP § 807.07(a).
In this case, the drawing is spotted. Spotting (unless the spotting is meant to indicate stippling) on the drawing page is unacceptable because a reproduction of the drawing page results in a poor quality representation of the mark.
The requirements for a special‑form drawing are as follows:
(1) The drawing must appear in black and white; no color is permitted.
(2) Every line and letter must be black and clear.
(3) The use of gray to indicate shading is unacceptable.
(4) The lining must not be too fine or too close together.
(5) The preferred size of the area in which the mark is displayed is 2½ inches (6.1 cm.) high and 2½ inches (6.1 cm.) wide. It should not be larger than 4 inches (10.3 cm.) high or 4 inches (10.3 cm.) wide.
(6) If the reduction of the mark to the required size renders any details illegible, the applicant may insert a statement in the application to describe the mark and these details.
37 C.F.R. §2.52; TMEP §§807.01(b) and 807.07(a). The Office will enforce these drawing requirements strictly.
The Office prefers that the drawing be depicted on a separate sheet of smooth, nonshiny, white paper 8 to 8½ inches (20.3 to 21.6 cm.) wide and 11 inches (27.9 cm.) long, and that the sheet contain a heading listing, on separate lines, the applicant’s complete name; the applicant’s address; the goods or services recited in the application; and, if the application is filed under Section 1(a) of the Act, the dates of first use of the mark and of first use of the mark in commerce; or, if the application is filed under Section 44(d), the priority filing date of the foreign application. 37 C.F.R. §2.52(b); TMEP §§807.01(a), 807.01(b), 807.01(c) and 807.07(a).
Response Guidelines
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney. Current status and status date information is available, via push button telephone, for all federal trademark registration and application records maintained in the automated Trademark Reporting and Monitoring (TRAM) system. The information may be accessed by calling (703) 305-8747 from 6:30 a.m. until midnight, Eastern Time, Monday through Friday, and entering a seven-digit registration number or eight-digit application number, followed by the “#” symbol, after the welcoming message and tone. Callers may request information for up to five registration number or application number records per call.
/Toni Y. Hickey/
Trademark Examining Attorney
Law Office 115
(703) 308-9115 X134
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.