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  76/566782

 

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.

 

Request for Information

The nature of the goods 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). 

 

 

 

 

Filing Receipt

Applicant submitted a request that the filing receipt be changed from “2WAM WESTON WIDE AREA” to “2WAM.”  This request is not understood.  The mark on the drawing page submitted with this application clearly showed the wording 2WAM  WESTON  WIDE AREA MONITORING under a design including a truck, city skyline and some sort of boat.

 

As set forth in TMEP section 807.05

However, if an applicant submits a separate drawing page showing a mark, and a different mark appears in the written application, the drawing controls for purposes of determining what the mark is. The Office will disregard the mark in the written application. The applicant may not amend the mark if the amendment is a material alteration of the mark on the drawing page. 37 C.F.R. §2.72. See In re L.G. Lavorazioni Grafite S.r.l., 61 USPQ2d 1063 (Comm'r Pats. 2001). See TMEP §807.14(a) regarding material alteration.

The wording cannot be deleted from the drawing as it would be a material alteration.

 

Significance of Mark

Applicant must specify whether “2WAM” or “2 WAM” or “2” or “WAM” has any significance in the environmental software trade or industry.  37 C.F.R. §2.61(b).

 

Disclaimer

Applicant must insert a disclaimer of WIDE-AREA MONITORING in the application because it merely describes a use or purpose for the goods.  Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.08(a)(i).

 

The following is the accepted standard format for a disclaimer:

 

No claim is made to the exclusive right to use “WIDE-AREA MONITORING” apart from the mark as shown.

 

Drawing

Applicant must submit a new drawing showing the entire mark clearly and conforming to 37 C.F.R. §2.52.  The current drawing is not acceptable because it is too dense and blurry, so that not all elements are visible, and it will not reproduce satisfactorily.  TMEP §807.07(a).

 

The requirements for a special-form drawing are as follows:

 

·        The drawing must appear in black and white if color is not claimed as a feature of the mark, or in color if color is claimed as a feature of the mark.

 

·        Drawings must be typed or made with a pen or by a process that will provide high definition when copied.  A photolithographic, printer’s proof copy, or other high quality reproduction of the mark may be used.  All lines must be clean, sharp and solid, and must not be fine or crowded.

 

·        The image must be no larger than 3.15 inches (8 cm) high by 3.15 inches (8cm) wide.

 

·        If reduction of the mark to the required size renders any details illegible, then applicant may insert a statement in the application to describe the mark and these details.

 

37 C.F.R. §§2.52(b); See TMEP §§807.01(b) and 807.07(a).

 

If submitted on paper, the Office prefers that the drawing be depicted on a separate sheet of non-shiny, white paper that is 8 to 8.5 inches wide and 11 to 11.69 inches long (20.3 to 21.6 cm. wide and 27.9 to 29.7 cm. long).  One of the shorter sides of the sheet should be regarded as its top edge. In addition, the drawing should include the caption “DRAWING PAGE” at the top of the drawing beginning one-inch (2.5 cm) from the top edge.  37 C.F.R. §2.54.

 

The Office strictly enforces these drawing requirements.

 

Because the mark is so dark and indistinct, it is not possible to tell for certain if the “SM” or “TM” designations are shown after 2WAM.  If they are, Applicant must submit a new drawing with “TM” or “SM” deleted because they are not part of the mark.  TMEP §§807.04 and 807.15.

 

Applicant must indicate what type of boat is  visible in the drawing.

 

Specimen

Applicant must submit (1) a substitute specimen showing the mark as it is used in commerce on the goods or on packaging for the goods, and (2) a statement that “the substitute specimen was in use in commerce at least as early as the filing date of the application,” verified with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §§2.56 and 2.59(a); TMEP §904.09.

 

The current specimen of record comprises a promotional or sales brochure and is unacceptable as evidence of actual trademark use because it appears to refer to services.  Invoices, announcements, order forms, bills of lading, leaflets, brochures, publicity releases and other printed advertising material, while normally acceptable for showing use in connection with services, generally are not acceptable specimens for showing trademark use in connection with goods.  In re Bright of America, Inc., 205 USPQ 63 (TTAB 1979); See In re Ultraflight Inc., 221 USPQ 903 (TTAB 1984); TMEP §§904.05 and 904.07.

 

Examples of acceptable specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the goods or packaging, or displays associated with the goods at their point of sale.  TMEP §§904.04 et seq.

 

If an amendment of the dates‑of‑use clause is necessary in order to state the correct dates of first use, then applicant must verify the amendment with a notarized affidavit or a signed declaration in accordance with 37 C.F.R. §2.20.  37 C.F.R. §2.71(c).

 

Declaration

The following is a properly worded declaration under 37 C.F.R. §2.20.  At the end of the response, the applicant should insert the declaration signed by a person authorized to sign under 37 C.F.R. §2.33(a).

 

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 and the like may jeopardize the validity of the application or document 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)

 

_____________________________

(Print or Type Name and Position)

 

_____________________________

(Date)

 

 

 

 

 

/Michelle S. Wiseman/

Trademark Examining Attorney

U.S. Patent & Trademark Office, LO 108

(703) 440-4014

michelle.wiseman@uspto.gov

 

 

 

 

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.