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  76/586183

 

The assigned examining attorney has reviewed the statement of use filed on 6/5/06 and has determined the following.

 

Drawing of Mark Does Not Agree With Mark on Specimen

 

The mark as depicted on the drawing disagrees with the mark as it appears on the specimen, and clarification is required.  37 C.F.R. §2.51; TMEP §§807.12-12(a).  Applicant must submit a substitute specimen that shows use of the mark as it appears on the drawing and include a statement that “the substitute specimen was in use in commerce prior to the expiration of the time allowed to applicant for filing a statement of use,” verified with an affidavit or a signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §§2.59(b) and 2.72(b); TMEP §§807.14 et seq. and 904.09.

 

In the present case, the drawing displays the mark as DURA HAND, and the specimen shows the mark as ISI DURAHAND.  Applicant may not amend the drawing to conform to the display on the specimen because the essence or character of the mark would be materially altered, i.e., the mark on the specimen creates a different commercial impression from the mark on the drawing.  37 C.F.R. §2.72(b); TMEP §§807.14 et seq.  In addition, applicant may not withdraw the statement of use.  37 CFR §2.88(g); TMEP §1109.17.

 

Advisory

 

Please note that if applicant wishes to amend the mark from DURA HAND, two words to DURAHAND, one word, applicant may do so.  However, applicant must also withdraw the disclaimer of HAND, because the amended mark is one word and a disclaimer is not required.  To this end, applicant must then submit a substitute drawing showing the mark depicted as one word, without ISI which is not a part of the original mark as shown on the drawing.

 

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

 

 

 

 

 

/Priscilla Milton/

Examining Attorney

Law Office 110

(571) 272-9199

 

 

 

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.