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. 

 

 

Serial Number  76/597906

 

The examining attorney has reviewed the statement of use dated November 8, 2005 and notes the following.

 

Dates of Use Interpreted as After Date of Filing

 

Registration is refused because applicant does not appear to have used the mark in commerce at the time the statement of use was filed.  Trademark Act Section 1(d), 15 U.S.C. §1051(d); 37 C.F.R. §2.88(b)(1); TMEP §§1109.09(a) and 1109.16(a).  Applicant has specified “November 2005” as the dates of first use of the mark which the Office interprets as the last day of November, 2005.  TMEP §903.07.  Thus that date is after November 8, 2005, the date on which the statement of use was filed.

 

If applicant used the mark in commerce prior to the expiration of the time allowed to applicant for filing a statement of use, then applicant may correct the dates of use, and the trademark examining attorney will withdraw this refusal.  Applicant must verify the corrected dates of use with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.71(c); TMEP §§903.05 and 1109.09(a).

 

Applicant may not withdraw the statement of use.  37 C.F.R. §2.88(g); TMEP §§903.05 and 1109.17.

 

Specimen Unacceptable

 

The current specimen of record comprises “imprinting on advertisements and promotional materials” and is unacceptable as evidence of actual trademark use because it does not show use of the mark on the goods themselves, or their packaging.  Examples of acceptable specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the goods or packaging, or displays associated with the goods at their point of sale.  TMEP §§904.04 et seq.  If the submitted specimen is, in fact, a label used with the goods, this must be stated for the record.

 

Otherwise, applicant must submit (1) a substitute specimen showing the mark as it is used in commerce on the goods or on packaging for the goods, and (2) 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. §§2.56, 2.59(b)(2) and 2.88(b)(2); TMEP §§904.09 and 1109.09(b).

 

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)

 

 

 

 

Questions

 

If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at the number below.

 

 

/John M. Gartner/

Trademark Examining Attorney

Law Office 102

(571) 272-9255

 

 

 

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.