UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

This Office Action responds to applicant’s correspondence dated July 11, 2006.  In its response applicant claimed the prior registration, which is accepted and made of record.  Additionally, the applicant provided a substitute specimen.  The examining attorney has considered the applicant's substitute specimen carefully but has found it unacceptable.  As such the substitute specimen is insufficient and the requirement for a specimen that shows use of the mark for the services specified is maintained and made FINAL.

 

Specimen

 

The substitute current specimen of record comprises a copy of the applicant’s computer web site and shows the proposed mark but do not show the proposed mark for any distributorship services.   Applicant must submit a substitute specimen showing use of the mark for the services specified in the application.  37 C.F.R. §2.56; TMEP §904. 

 

Applicant must also submit 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. §2.59(a); TMEP §904.09.

 

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 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)

 

_____________________________

(Print or Type Name and Position)

 

_____________________________

(Date)

 

 

This requirement is continued and is now made FINAL

 

Responding to a Final Office Action

 

If applicant fails to respond to this final action within six months of the mailing date, the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond to this final action by: 

 

(1)   submitting a response that fully satisfies all outstanding requirements, if feasible (37 C.F.R. §2.64(a)); and/or

 

(2)   filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class (37 C.F.R. §§2.6(a)(18) and 2.64(a); TMEP §§715.01 and 1501 et seq.; TBMP Chapter 1200).

 

In certain circumstances, a petition to the Director may be filed to review a final action that is limited to procedural issues, pursuant to 37 C.F.R. §2.63(b)(2).  37 C.F.R. §2.64(a).  See 37 C.F.R. §2.146(b), TMEP §1704, and TBMP Chapter 1201.05 for an explanation of petitionable matters.  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

How to Respond to this Office Action:

 

ONLINE RESPONSE:  You may respond formally using the Office’s Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://www.gov.uspto.report/teas/index.html and follow the instructions, but if the Office Action issued via email you must wait 72 hours after receipt of the Office Action to respond via TEAS).

 

REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above and include the serial number, law office number and examining attorney’s name in your response.

 

Mailing/E-mailing Date Information: 

 

If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.

 

Applicants, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at:

 

http://www.gov.uspto.report/teas/index.html.

 

Copies of Documents 

 

The applicant may view and download any or all documents contained in the electronic file wrapper of all pending trademark applications, as well as many registrations via the Trademark Document Retrieval (TDR) system available online at the following site:

 

http://portal.gov.uspto.report/external/portal/tow. 

 

Currently, applicant’s can access all pending applications and all Madrid Protocol filings, as well as many valid registrations, via TDR.  The USPTO is in the process of converting all remaining registrations into digital format, to permit future TDR access.  This conversion process is expected to take several years.

 

New TEAS Plus Filing System

 

On July 18, 2005, the USPTO introduced a new version of the application for a Trademark/Service mark, Principal Register.  The TEAS Plus form features a lower filing fee of $275 per class of goods and/or services (the TEAS form fee is $325 per class of goods and/or services), but has stricter filing requirements than the regular TEAS form.  Applicants are encouraged to read more about this new alternative filing program at the following site:

 

http://www.gov.uspto.report/teas/eTEASupcoming.html#TEASPlus.

 

Status of Application:

 

To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at the following site:

 

http://tarr.uspto.gov.

 

General Trademark Information:

 

For general information about trademarks, please visit the Office’s website at:

 

http://www.gov.uspto.report/main/trademarks.htm

 

For inquiries or questions about this office action, please contact the assigned examining attorney.

 

/JSD/

 

Jeffrey S. DeFord

Examining Attorney

United States Patent & Trademark Office

Law Office 115

(571) 272-9469