Reconsideration Letter

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

OFFICE ACTION GRANTING REQUEST FOR RECONSIDERATION

 

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 76/583960

 

This letter responds to the applicant’s communication filed on November 7, 2005 in which the applicant has submitted an amendment to allege use and a request for reconsideration of a final refusal dated May 5, 2005.

 

Objection to Evidence Improperly made of Record

As an initial matter, the examining attorney objects to the cited third party registrations  referenced to the applicant’s response because the applicant failed to make the registrations properly of record. Third party registrations may be made of record when accompanied by legible, soft copies of the registrations themselves or the electronic equivalent thereof.  Weyerhaeuser Co. v. Katz, 24 USPQ2d 1230, 1231-29 TTAB 1992).  Because the applicant has merely provided a summary reference to the registrations, they should not be considered part of the record evidence.  See In re Huntry Pelican, Inc., 219 USPQ 1202, 1204 n.5 (TTAB 1983); In re Delbar Products, Inc., 217 USPQ 859, 861 (TTAB 1981). 

 

Disclaimer

In its request for reconsideration, the applicant traverses the final requirement for a disclaimer of the descriptive wording COCHLEAR.  The examining attorney has considered the applicant’s arguments carefully but has found them unpersuasive.  The final requirement for an acceptable disclaimer is thus continued and maintained.

 

The computerized printing format for the Trademark Official Gazette requires a standard form for a disclaimer.   TMEP §1213.08(a)(i).  A properly worded disclaimer should read as follows:

 

No claim is made to the exclusive right to use COCHLEAR apart from the mark as shown.

 

See In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).

 

Supplemental Register

In its request for reconsideration, the applicant alternatively seeks registration on the Supplemental Register.  The applicant’s proposed amendment is not acceptable because the mark comprises a nondescriptive design element that is eligible for registration on the Principal Register. “A mark that is clearly eligible for the Principal Register may not be registered on the Supplemental Register.  An application requesting registration on the Supplemental Register must be amended to the Principal Register, or refused registration if the mark is registrable on the Principal Register.  Daggett & Ramsdell, Inc. v. I. Posner, Inc., 115 USPQ 96 (Comm'r Pats. 1957).”  TMEP §815.01. 

 

Specimen

With its amendment to allege use, the applicant has provided a specimen of use.  Unfortunately, the image is very faint and the mark is not visible on the specimen. The specimen is thus unacceptable as evidence of actual trademark use because it does not show the mark used on the identified goods. 

 

The applicant must submit a specimen showing the mark as used in commerce.  37 C.F.R. §§2.56 and 2.76(b)(2).  Examples of acceptable specimens are tags, labels, instruction manuals, containers or photographs that show the mark on the goods or packaging.  TMEP §904.04 et seq. 

 

If applicant submits a clear and legible version of the same specimen originally filed, then no additional verification need be submitted.  However, if the substitute specimen or facsimile is of a different type than that originally submitted, then the new specimen constitutes a “substitute” specimen.  In that case, applicant must also submit a statement that “the substitute specimen was in use in commerce prior to filing the amendment to allege use.  Jim Dandy Co. v. Siler City Mills, Inc., 209 USPQ 764 (TTAB 1981); 37 C.F.R. §2.59(b)(1). The statement supporting use of the substitute specimen must read as follows: 

 

The applicant used the substitute specimen in commerce prior to filing the amendment to allege use.

 

The applicant must sign this statement either in affidavit form or with a declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.59(b)(1).  The following is a properly worded declaration under 37 C.F.R. §2.20.  At the end of the response, the applicant should insert the declaration signed by a person authorized to sign under 37 C.F.R. §2.33(a).

 

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 may jeopardize the validity of the application 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.

_____________________________

(Signature)

_____________________________

(Print or Type Name and Position)

_____________________________

(Date)

 

Response

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

 

The granting of a request for reconsideration does not extend the time for filing an appeal. The time for appeal runs from the date the final action was mailed.  37 C.F.R. Section 2.64(b); TMEP Section 715.03(c).

 

/Tracy L. Fletcher/

Trademark Examining Attorney

Law Office 115

U.S. Patent & Trademark Office

Telephone: (571) 272-9471

Facsimile: (571) 273-9471

 

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 has been 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.