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. 

 

 

Serial Number  76/582840

 

This letter responds to the applicant’s communication filed on April 7, 2005 in which the applicant 1) submitted an acceptable identification of goods and 2) argued against the examiner’s rejection of its specimen of record.  1) is acceptable.

 

 

The requirement for a new specimen is maintained and made FINAL.

 

 

Printed/Web Catalog as Specimen Not Acceptable to Show Trademark Use

 

The specimen submitted does not show proper trademark use because the mark as it appears in the catalog or website display is not shown in close proximity to a picture of the goods and/or it does not include the necessary ordering information or link to ordering information.  A printed or web catalog or similar specimen is only acceptable to show trademark use if it includes (1) a picture of the relevant goods, (2) the mark appearing sufficiently near the picture of the goods so as to associate the mark with the goods, and (3) information necessary to order the goods (e.g., sales form, price list, instructions for ordering, etc.).  In re Dell Inc., 71 USPQ2d 1725 (TTAB 2004); Lands’ End Inc. v. Manbeck, 797 F. Supp. 511, 24 USPQ2d 1314 (E.D. Va. 1992); In re MediaShare Corporation, 43 USPQ2d 1304 (TTAB 1997); TMEP §§904.06(a) and (b).

 

Please note the following bolded wording from the TMEP.

 

904.06(a) Catalogs as Specimens for Trademarks

 

Accordingly, examining attorneys should accept any catalog or similar specimen as a display associated with the goods, provided:  (1) it includes a picture of the relevant goods; (2) it shows the mark sufficiently near the picture of the goods to associate the mark with the goods; and (3) it includes the information necessary to order the goods, (e.g., an order form, or a phone number, mailing address, or e-mail address for placing orders).  Any form of advertising that satisfies these criteria should be construed as a display associated with the goods. 

The mere inclusion of a phone number, Internet address and/or mailing address on an advertisement describing the product is not sufficient.  There must be an offer to accept orders or instructions on how to place an order.  In re MediaShare Corp., 43 USPQ2d 1304 (TTAB 1997) (fact sheet brochures held not to qualify as a catalog under Lands' End, where the specimen failed to show the mark near a picture of the goods, and included no information as to how to order the goods).  It is not necessary that the specimen list the price of the goods. 

The applicant should consider amending basis to Section 1(b)

Requirements for an Application Based on Section 1(b):  Intent-to-Use

 

To base the application on a bona fide intention to use the mark in commerce, the applicant must submit the following statement:

 

The applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application since the filing date of the application.

 

This statement must be verified, i.e., supported either by an affidavit or by a declaration under 37 C.F.R. §§2.20 and 2.33.  Trademark Act Section 1(b), 15 U.S.C. §1051(b);  37 C.F.R. §2.34(a)(2)(i); TMEP §806.01(b).

 

This requirement is maintained and made FINAL.

 

 

 

 

Options

 

Please note that the only appropriate responses to a final action are either (1) compliance with the outstanding requirements, if feasible, or (2) filing of an appeal to the Trademark Trial and Appeal Board.  37 C.F.R. Section 2.64(a).  If the applicant fails to respond within six months of the mailing date of this refusal, this Office will declare the application abandoned.  37 C.F.R. Section 2.65(a).

 

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.

 

 

/Timothy J. Finnegan/

Trademark Examiner

Law Office 105

(703) 308-9105 ext. 166

new phone as of 10/28/04

(571) 272-9710

 

 

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.