Offc Action Outgoing

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  76/595731

 

I.         INTRODUCTION

 

            This Office Action responds to the applicant’s correspondence of March 31, 2006.  Having carefully considered the applicant’s response, the examining attorney has determined the following.

 

II.        FINAL REFUSAL -- SUBSTITUTE SPECIMEN REQUIRED

 

            The applicant must submit a specimen showing use of the mark for the goods specified in the application, because the specimens currently of record, including the most recently submitted specimen, do not show use of the mark for the goods identified in the statement of use.  37 C.F.R. §§2.56 and 2.88(b)(2); TMEP §1109.09(b).  Rather, the specimens of record show use of the mark on brochures advertising medical equipment leasing services (what the applicant refers to as its CLICKCAD “fee-per procedure program”).  The applicant’s CLICKCAD leasing program allows the applicant’s customers to lease one of the applicant’s SECOND LOOK 200 computer-aided detection systems “with no capital investment or long-term financial obligation.”  See applicant’s substitute specimen submitted March 31, 2006.  In other words, it is the applicant’s SECOND LOOK mark that is being used in connection with the goods listed in this application, whereas the CLICKCAD mark is being used as a service mark for the leasing program.

               In addition to a substitute specimen, the applicant must also submit a statement that “the substitute specimen was in use in commerce prior to the expiration of the time allowed applicant for filing a statement of use,” verified with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.59(b)(2); TMEP §904.09.  Examples of acceptable specimens are tags, labels, instruction manuals, containers or photographs that show the mark on the goods or packaging.  If an amendment of the dates‑of‑use clause is necessary in order to state the correct dates of first use, the applicant must also verify that amendment with an affidavit or a declaration in accordance with 37 C.F.R. Section 2.20.  37 C.F.R. Section 2.71(c).  The following is a sample declaration under 37 C.F.R. §2.20 with a supporting statement for a substitute specimen:

 

The undersigned being warned that willful false statements and the like 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 registration resulting there from, declares that the substitute specimen was in use in commerce prior to the expiration of the time allowed to the applicant for filing a statement of use; 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)

 

III.            CONCLUSION

 

            If the 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).  The 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).

 

            If the applicant has any questions or needs assistance in responding to this Office action, please do not hesitate to telephone the assigned examining attorney.

 

 

 

 

/Nicholas Altree/

Trademark Examining Attorney

Law Office 107

(571) 272-9336

(571) 273-9336 FAX

 

 

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.