Offc Action Outgoing

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. 

 

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.

 

Serial Number  76/575023

 

The assigned examining attorney has reviewed the statement of use filed on June 9, 2006 and has determined the following:

 

1.            Declaration

 

The statement of use declaration does not contain the wording that “applicant is the owner of the mark.”  The statement of use must include a verified statement that the applicant believes it is the owner of the mark, and a verification of the dates of use and identification of the goods/services.  15 U.S.C. §1051(d)(1); 37 C.F.R. §2.88(b)(1).  See regarding ownership, regarding dates of use, and regarding the identification of goods/services.  The averment of ownership is an essential element of the verification.  TMEP §1109.11(b).  If it is omitted, the examining attorney must require the applicant to submit a verified statement that the applicant is the owner of the mark.  Id.  This statement can be submitted after expiration of the time for filing the statement of use.  Id.

 

Therefore, applicant must submit the following statement, properly verified in an affidavit or declaration under 37 C.F.R. §2.20:  “Applicant is the owner of the mark.”

 

2.            Identification of Goods

 

The statement of use does not contain a description of the goods on or in connection with which the mark is in use in commerce.  Applicant must submit (1) a description of the goods with which the mark is in use in commerce, and (2) a statement that "applicant used the mark on the specified goods and/or services in commerce before the expiration of the time period for filing a statement of use.”  The above noted description and statement must be verified by a notarized affidavit or a signed declaration in accordance with 37 C.F.R. §2.20.  37 C.F.R. §2.88(b)(1); TMEP §§1109.11, 1109.11(b) and 1109.13.

 

3.            Specimen

 

The current specimen of record comprises a photocopy of a rubber stamp used on the packaging for the goods and is unacceptable as evidence of actual trademark use because it does not show the use of the mark in commerce on the goods identified in the notice of allowance.  There is no context for the applicant’s use of the rubber stamp.  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.

 

Accordingly, the 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 prior to the expiration of the time allowed applicant for filing a statement of use,” verified with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §§2.56, 2.59(b)(2) and 2.88(b)(2); TMEP §§904.09 and 1109.09(b).

 

4.            Drawing of the Mark

 

Because of the degree of stylization of the font used to depict the mark on the drawing page, applicant must clarify whether a standard character drawing format or a special-form drawing format was intended.  TMEP §§807.03 et seq. and 807.04 et seq.  If a standard character drawing was intended, then applicant must submit the following statement:  “The mark consists of standard characters without claim to any particular font, style, size, or color.”  37 C.F.R. §2.52(a).  If a special-form drawing was intended, then applicant must state so for the record.  37 C.F.R. §2.52(b).

 

In a standard character drawing, the mark on the drawing consists of only words, letters or numbers, but does not include any designs or claims as to particular font, style, size, or color.  A registration for a mark using a standard character drawing affords protection not only for the standard character version of the mark, but for any possible renderings of the mark, as long as those renderings do not contain any design elements; i.e., a registered standard character drawing of the mark gives protection for display on the specimens in any lettering style.  A special-form drawing, on the other hand, shows the mark in stylized letters and/or with a design element and provides protection for only that specific rendering.  37 C.F.R. §2.52; TMEP §§807.03 et seq. 807.04 et seq.

 

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

 

A prompt response to this Office action will expedite the handling of this matter.

 

 

 

/Barbara A. Gaynor/

Barbara A. Gaynor

Trademark Examining Attorney

Law Office 115

571-272-9164

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond using the Office’s Trademark Electronic Application System (TEAS) Response to Office action form available on our website at http://www.gov.uspto.report/teas/index.html.  If the Office action issued via e-mail, you must wait 72 hours after receipt of the Office action to respond via TEAS.  NOTE:  Do not respond by e-mail.  THE USPTO WILL NOT ACCEPT AN E-MAILED RESPONSE.
• 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.  NOTE:  The filing date of the response will be the date of receipt in the Office, not the postmarked date.  To ensure your response is timely, use a certificate of mailing.  37 C.F.R. §2.197.

 

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.