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  76/569192

 

This letter responds to applicant’s communication filed on January 18, 2005.

 

In its response, applicant amended the recitation of goods, added an international class to the application and paid the additional filing fee, provided substitute specimens and a standard character claim, and argued against the examining attorney’s descriptiveness refusal. The recitation of goods and the standard character claim are acceptable and have been entered into record.  The examining attorney also withdraws the descriptiveness refusal.

 

The examining attorney discussed the following issues with the applicant on March 10, 2005:

 

Failure to Function as a Trademark -- International Class 16

The Examining Attorney refuses registration because the proposed mark does not function as a trademark.  Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051, 1052 and 1127.  The proposed mark neither identifies and distinguishes the goods of the applicant from those of others nor indicates their source.  In Re Remington Products Inc., 3 USPQ2d 1714 (TTAB 1987).  TMEP §§1202 et seq.  Please note that the proposed mark does not function as a trademark because the specimen submitted with the application is unacceptable as evidence of actual trademark use; therefore, the proposed mark cannot identify and distinguish the applicant's goods from those of others nor indicate their source. 

 

The specimen of record is unacceptable as evidence of actual trademark use because it is merely on-line advertising for related services, and not a source identifier for the identified goods.  Invoices, announcements, order forms, bills of lading, leaflets, brochures, publicity releases and other 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). 

 

Accordingly, 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, 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 prior to the filing of the application.  37 C.F.R. §2.59(a); TMEP § 904.09.

 

If an amendment of the dates-of-use clause is necessary in order to state the correct dates of first use, the applicant must verify the amendment with an affidavit or a declaration in accordance with 37 C.F.R. §2.20.  37 C.F.R. §2.71(c); TMEP §903.05.

 

The stated refusal refers to Class 16 only and does not bar registration in the other class.

 

Pending an adequate response to the above, the examining attorney refuses registration under Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051, 1052 and 1127, because the record does not show use of the proposed mark as a trademark.

 

Substituting a Basis to Overcome Refusal

Applicant may overcome the refusal to register this mark by amending the application to assert a different basis for filing the application and submitting the requirements for the new basis. TMEP §§806.03 et seq.

 

In this case, applicant may wish to amend the application to assert an intent-to-use basis.

 

Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.  If applicant chooses to respond to the refusal to register, then applicant must also respond to the following requirement.

 

Drawing -- International Class 9

The mark as depicted on the drawing does not agree with the mark as it appears on the specimen, and clarification is required.  In the present case, the drawing displays the mark as “RPI,” and the specimen shows the mark as “RPI EVALUATION”.  37 C.F.R. §2.72(a); TMEP §§807.14, 807.14(a) and 807.14(a)(i).  Applicant may not submit an amended drawing to conform to the display on the specimen because the character of the mark would be materially altered, i.e., the mark on the specimens creates a different commercial impression from the mark on the drawing.

 

Therefore, applicant must do one of the following:

 

(1)   submit a substitute specimen showing use of the mark as it appears on the drawing, with 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) and 2.72(a); TMEP §904.09; or

 

(2)   amend the basis to Section 1(b) and satisfy all the requirements for this new basis.  37 C.F.R. §2.51; TMEP §807.14.

 

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

NOTICE:  FEE CHANGE   

 

Effective January 31, 2005 and pursuant to the Consolidated Appropriations Act, 2005, Pub. L. 108-447, the following are the fees that will be charged for filing a trademark application:

 

(1) $325 per international class if filed electronically using the Trademark Electronic Application System (TEAS); or 

 

(2)   $375 per international class if filed on paper

 

These fees will be charged not only when a new application is filed, but also when payments are made to add classes to an existing application. If such payments are submitted with a TEAS response, the fee will be  $325 per class, and if such payments are made with a paper response, the fee will be $375 per class.

 

The new fee requirements will apply to any fees filed on or after January 31, 2005.

 

NOTICE:  TRADEMARK OPERATION RELOCATION

 

The Trademark Operation has relocated to Alexandria, Virginia.  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, 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.

 

 

/Dawn Han/

Dawn Han

Trademark Examining Attorney

USPTO  Law Office 113

571-272-9432

dawn.han@uspto.gov

 

 

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.

 

STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

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 SPECIFIED ABOVE.