UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/561189
APPLICANT: Elios Ceramica S.p.A.
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*76561189* |
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CORRESPONDENT ADDRESS: MICHAEL A. GROW ARENT FOX KINTNER PLOTKIN AND KAHN 1050 CONNECTICUT AVENUE, NW WASHINGTON, DC 20036
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514
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MARK: ELIOS
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CORRESPONDENT’S REFERENCE/DOCKET NO: E 23586
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 76/561189
The assigned examining attorney has reviewed the referenced application and determined the following.
There are two different specimens of record.
With respect to the apparent brochure showing use of the exact mark in the drawing, the specimen is unacceptable as evidence of actual trademark use because it appears to be an advertisement for the goods. 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.
With respect to the apparent label showing use for a mark differing from that in the drawing, it is pointed out that the drawing displays the mark as having the term ELIOS beneath the design element. However, this differs from the display of the mark on the specimen, where it appears as having the term ELIOS to the left of the design element. The applicant must either:
(1) submit a new drawing of the mark that agrees with the specimen; or
(2) submit a substitute specimen that shows use of the mark shown in the drawing.
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).
If a substitute specimen is submitted, 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) and 2.72(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. §2.20; TMEP §904.09.
The applicant must indicate whether “ELIOS” has any significance in the relevant trade, any geographical significance, or any meaning in a foreign language. 37 C.F.R. §2.61(b).
SEARCH CLAUSE
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.
If the applicant has any questions about this Office action, please telephone the assigned examining attorney.
/Steven Foster/
Steven Foster, Trademark Attorney
Law Office 106
(703) 308-9106 Ext. 123
Fax number for the Law Office: (703) 746-8106
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.