Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE. 

 

 

Serial Number  76/584997

 

This letter responds to applicant’s communication filed on December 27, 2004.

 

In its response, the applicant reclassified its goods and submitted a disclaimer and a substitute drawing. The classification and disclaimer are acceptable and have been made of record.

 

For the reasons discussed below, the substitute drawing is unacceptable. The requirement for an acceptable drawing is maintained and made FINAL.

 

FINAL REQUIREMENT FOR ACCEPTABLE DRAWING

 

Applicant’s original drawing was unacceptable because it contained shading and did not match the depiction of the mark shown on the specimen. In its response, the applicant has submitted a new drawing of the mark in black and white. The new drawing contains lining in the curved band at the bottom of the design. The lining is not part of the depiction of the mark on the specimen. Therefore, applicant’s substitute drawing does not agree with the mark as shown on the specimen.

 

Applicant must either:

 

(1)   submit a new drawing of the mark that agrees with the mark as it appears on the specimen and that is not a material alteration of the original mark; 37 C.F.R. §2.72(a); TMEP §807.14(a);

 

(2)   submit a substitute specimen that shows use of the mark as it presently appears on the drawing and is accompanied by a statement that “the substitute specimen was in use in commerce at least as early as the filing date of the application,” verified with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20; 37 C.F.R. §§2.59(a) and 2.72(a); TMEP §904.09; or

 

(3)   amend the application basis to intent-to-use under Section 1(b), and satisfy all the requirements for this new basis.

 

37 C.F.R. §2.51; TMEP §§807.14 and 807.14(a)(i).

 

If the applicant submits a substitute specimen depicting the mark with the lining shown in the substitute drawing, the applicant must also submit a statement for the record that the lining is a feature of the mark.

 

If the applicant submits a substitute drawing, the requirements for a special-form drawing are as follows:

 

·        The drawing must appear in black and white if color is not claimed as a feature of the mark, or in color if color is claimed as a feature of the mark.

 

·        Drawings must be typed or made with a pen or by a process that will provide high definition when copied.  A photolithographic, printer’s proof copy, or other high quality reproduction of the mark may be used.  All lines must be clean, sharp and solid, and must not be fine or crowded.

 

·        The image must be no larger than 3.15 inches (8 cm) high by 3.15 inches (8cm) wide.

 

·        If reduction of the mark to the required size renders any details illegible, then applicant may insert a statement in the application to describe the mark and these details.

 

37 C.F.R. §§2.52(b); See TMEP §§807.01(b) and 807.07(a).

 

If submitted on paper, the Office prefers that the drawing be depicted on a separate sheet of non-shiny, white paper that is 8 to 8.5 inches wide and 11 to 11.69 inches long (20.3 to 21.6 cm. wide and 27.9 to 29.7 cm. long).  One of the shorter sides of the sheet should be regarded as its top edge. In addition, the drawing should include the caption “DRAWING PAGE” at the top of the drawing beginning one-inch (2.5 cm) from the top edge.  37 C.F.R. §2.54.

 

The Office strictly enforces these drawing requirements.

 

To submit a special form drawing electronically, applicant must attach a digitized image of the mark to the submission.  The digitized image must be in .jpg format, formatted at no less than 300 dots per inch and no more than 350 dots per inch.  The Office recommends that the digitized image of the mark have a length and width of no smaller than 250 pixels and no larger than 944 pixels.  37 C.F.R. §2.53(c); 69 Fed. Reg. 59,809.  All lines in the image must be clean, sharp and solid, and not fine or crowded, and produce a high quality image when copied. 

 

For the reasons noted above, the requirement for an acceptable drawing is maintained and made FINAL.

 

RESPONSE GUIDELINES

 

If applicant fails to respond to this final action within six months of the mailing date, the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond to this final action by: 

 

(1)   submitting a response that fully satisfies all outstanding requirements, if feasible (37 C.F.R. §2.64(a)); and/or

(2)   filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class (37 C.F.R. §§2.6(a)(18) and 2.64(a); TMEP §§715.01 and 1501 et seq.; TBMP Chapter 1200).

 

In certain circumstances, a petition to the Director may be filed to review a final action that is limited to procedural issues, pursuant to 37 C.F.R. §2.63(b)(2).  37 C.F.R. §2.64(a).  See 37 C.F.R. §2.146(b), TMEP §1704, and TBMP Chapter 1201.05 for an explanation of petitionable matter.  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

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.

 

 

/cpcain/

Catherine Pace Cain

Trademark Attorney

Law Office 113

571-272-9427

 

 

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.

 

To check the status of your application at any time, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.gov.uspto.report/

 

For general and other useful information about trademarks, you are encouraged to visit the Office’s web site at http://www.gov.uspto.report/main/trademarks.htm

 

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