| To: | The Nelrod Company (Nelson@nelrod.com) |
| Subject: | TRADEMARK APPLICATION NO. 76583697 - DIAMOND RIM SYSTEM - N/A |
| Sent: | 10/18/04 1:23:07 PM |
| Sent As: | ECOM113@USPTO.GOV |
| Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/583697
APPLICANT: The Nelrod Company
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: DIAMOND RIM SYSTEM
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
CORRESPONDENT EMAIL ADDRESS: |
Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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Serial Number 76/583697
The assigned examining attorney has reviewed the referenced application and determined the following:
The examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d). TMEP section 1105.01.
Nevertheless, the applicant’s mark cannot be approved for publication unless and until the following issues are satisfactorily addressed:
A specimen showing use of the mark in the sale or advertising of the identified services is required for an application based on use of the mark in commerce under Trademark Act Section 1(a), 15 U.S.C. §1051(a). TMEP §904. The instant application does not include a specimen.
Applicant must submit (1) a specimen (i.e., an example of how applicant actually uses its mark in the sale or advertising of its services) showing the mark as it is used in commerce, and, (2) a statement that “the specimen was in use in commerce at least as early as the filing date of the application,” verified with a notarized affidavit or signed declaration under 37 C.F.R. §2.20. 37 C.F.R. §2.59(a); TMEP §904.09. A sample declaration is provided at the end of this Office Action.
Examples of acceptable specimens for services are signs, photographs, brochures, website printouts or advertisements that show the mark used in the sale or advertising of the services. TMEP §§1301.04 et seq.
If the applicant cannot comply with the specimen requirement, the applicant may substitute a different basis for filing if the applicant can meet the requirements for the new basis. See TMEP §§806.03 et seq. In this case, the applicant may wish to amend the application to assert a Section 1(b) basis.
If the applicant amends to substitute a basis, the applicant must submit the following statement in order to satisfy the application requirements for asserting a basis for registration under Section 1(b) of the Trademark Act:
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.
Trademark Act Section 1(b), 15 U.S.C. § 1051(b). This statement must be verified with a notarized affidavit or a signed declaration under 37 C.F.R, §2.20. Trademark Act Section 1(b), 15 U.S.C. §1051(b); 37 C.F.R. §2.34(a)(2); TMEP §§806.01(b) and 804.02.
Advisory Regarding Disclaimer
The applicant has inserted a disclaimer of “generic and descriptive terms” and “Diamond, Rim, or System”. The first statement is unacceptable because it does not disclaim any wording found in the mark. Regarding the second statement, it appears that DIAMOND is not descriptive of the applicant’s services and need not be disclaimed. Applicant is requested to either (1) confirm the inclusion in the record of the voluntary disclaimer of DIAMOND, or (2) request that it be withdrawn. The trademark examining attorney would not have required a disclaimer of this wording because it is not descriptive as applied to the applicant’s services.
While an applicant may voluntarily disclaim registrable matter, if applicant in this case entered the disclaimer under the mistaken belief that it would have been required, then applicant may withdraw the disclaimer. TMEP §1213.01(c).
The remainder of the disclaimer is required, as RIM SYSTEM describes a feature of the applicant’s services. In addition, the applicant must correct the format for the disclaimer of record. Applicant has entered a disclaimer of the individual terms RIM and SYSTEM apart from the mark as a whole. However, these terms appear together in the mark as the unitary phrase “RIM SYSTEM,” and this wording must therefore be disclaimed as a unit in the following format:
No claim is made to the exclusive right to use “RIM SYSTEM” apart from the mark as shown.
A disclaimer of the individual component words of a complete descriptive phrase is improper. See, e.g., In re Medical Disposables Co., 25 USPQ2d 1801, 1805 (TTAB 1992); In re Wanstrath, 7 USPQ2d 1412, 1413 (Comm’r Pats. 1987); American Speech-Language-Hearing Association v. National Hearing Aid Society, 224 USPQ 798, 804 n.3 (TTAB 1984); In re Surelock Mfg. Co., Inc., 125 USPQ 23, 24 (TTAB 1960). This standard is applied strictly, and the disclaimer of individual words separately is generally appropriate only when the words being disclaimed are separated by registrable matter. TMEP §1213.08(b).
Please note that there is no required format or form for responding to this Office action. However, applicant should include the following information on all correspondence with the Office: (1) the name and law office number of the examining attorney; (2) the serial number of this application; (3) the mailing date of this Office action; and, (4) applicant's telephone number.
When responding to this Office action, applicant must make sure to respond in writing to each refusal and requirement raised. If there is a refusal to register the proposed mark, then applicant may wish to argue against the refusal, i.e., explain why it should be withdrawn and why the mark should register. If there are other requirements, then applicant should simply set forth in writing the required changes or statements and request that the Office enter them into the application record. Applicant must also sign and date its response.
To expedite prosecution of this application, applicant is encouraged to file its response to this Office action through the Trademark Electronic Application System (TEAS), available at http://eteas.gov.uspto.report/V2.0/oa211.
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 and the like may jeopardize the validity of the application or document 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.
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(Signature)
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(Print or Type Name and Position)
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(Date)
The response or declaration must include one of the following statements:
1. “The substitute specimen was in use in commerce at least as early as the filing date of the application” (to be used if the applicant submits a specimen showing use of the mark in commerce)
2. “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. (to be used if the applicant amends to a Section 1(b) filing basis)
The USPTO Trademark Operations will be moving to the new Alexandria, Virginia campus in October and November 2004. During that time, you are strongly encouraged to communicate with the USPTO through the Trademark Electronic Application System (TEAS) which can be found at www.uspto.gov .
Effective October 4, 2004, all Trademark-related paper mail must be sent to:
Commissioner for Trademarks
P.O. Box 1451
Alexandria, VA 22313-1451
My Law Office will move on October 27, 2004. To reach me by phone after that date call (571) 272-9430.
To submit a fax response to this Office action after that date, send your response to the Law Office fax number, namely (571) 273-9113.
If the applicant has any questions or needs assistance in responding to this Office Action, please contact the assigned examining attorney.
/Kimberly Frye/
Trademark Examining Attorney
Law Office 113
(703) 308-9113 ext. 125
How to respond to this Office Action:
You may respond formally using the Office's Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://eteas.gov.uspto.report/V2.0/oa242/WIZARD.htm and follow the instructions therein, but you must wait until at least 72 hours after receipt if the office action issued via e-mail). PLEASE NOTE: Responses to Office Actions on applications filed under the Madrid Protocol (Section 66(a)) CANNOT currently be filed via TEAS.
To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the serial number, law office and examining attorney’s name on the upper right corner of each page of your response.