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.

Serial Number 76/569192

This letter responds to applicant’s communication filed on May 5, 2005. In it, applicant provided substitute specimens. After review and consideration, the examining attorney withdraws the failure-to-function refusal for International Class 16 and the requirement for the marks on the drawing and the specimen to match for International Class 9. The examining attorney has further determined the following:

Failure to Function as a Trademark -- International Class 9

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 substitute specimen of record is unacceptable as evidence of actual trademark use because it does not show use of the mark on or in close relation with the identified goods. 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 the mark on the substitute specimen should be acceptable, i.e., it shows use of applicant’s mark on the identified computer software goods, applicant must clarify the nature of the specimen.

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 9 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.

If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at the number below.

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.uspto.gov/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.uspto.gov/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.uspto.gov/external/portal/tow.

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.uspto.gov/main/trademarks.htm

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.