Offc Action Outgoing

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 76/600714

This letter responds to the applicant’s August 16, 2005 communication with this Office. Following consideration of the submission, the examining attorney concludes as follows.

Amended Drawing Unacceptable

The amended drawing is unacceptable for two reasons.

First, the proposed amendment of the drawing is unacceptable because it would materially alter the essence or character of the mark. 37 C.F.R. §2.72; TMEP §§807.14 et seq. See In re Who? Vision Systems, Inc., 57 USPQ2d 1211 (TTAB 2000) (amendment from TACILESENSE to TACTILESENSE found to be material alteration); In re CTB Inc., 52 USPQ2d 1471 (TTAB 1999) (proposed amendment of “TURBO AND DESIGN” to typed word “TURBO” is material alteration); In re Meditech International Corp., 25 USPQ2d 1159, 1160 (TTAB 1990) (“[a] drawing consisting of a single blue star, as well as a drawing consisting of a number of blue stars, would both be considered material alterations vis-à-vis a drawing consisting of the typed words ‘DESIGN OF BLUE STAR’”); In re Wine Society of America Inc., 12 USPQ2d 1139 (TTAB 1989) (proposed amendment to replace typed drawing of “THE WINE SOCIETY OF AMERICA” with a special form drawing including those words with a crown design and a banner design bearing the words “IN VINO VERITAS” held to be a material alteration); In re Nationwide Industries Inc., 6 USPQ2d 1882 (TTAB 1988) (addition of house mark “SNAP” to product mark “RUST BUSTER” held a material alteration).

In this case, the applicant’s amended drawing includes the phrase “…Life Just Got Easier!” This phrase was not included in the mark as filed and its addition now constitutes a material alteration.

The mark in a drawing cannot be amended if the change would materially alter the mark. TMEP §807.14. The Office determines whether a proposed amendment materially alters a mark by comparing the proposed amendment with the drawing of the mark filed with the original application. 37 C.F.R. §2.72; TMEP §807.14(c).

If republication of the amended mark would be necessary in order to provide proper notice to third parties for opposition purposes, then the mark has been materially altered and the amendment is not permitted. In re Who? Vision Systems Inc., 57 USPQ2d 1211, 1218 (TTAB 2000). “The modified mark must contain the essence of the original mark, and the new form must create the impression of being essentially the same mark.” Visa International Service Association v. Life Code Systems, Inc., 220 USPQ 740, 743 (TTAB 1983). “That is, the new and old forms of the mark must create essentially the same commercial impression.” In re Nationwide Industries Inc., 6 USPQ2d 1882, 1885 (TTAB 1988).

As such, the amendment is unacceptable.

Moreover, the applicant has amended its drawing from a color drawing to a black and white drawing.

The drawing showing the mark in black and white is unacceptable because the application claims color and fails to show the applied-for mark in color. 37 C.F.R. §2.52(b)(1). All applications for marks claiming color must include a drawing showing the mark in color. Applicant must therefore submit a new drawing that complies with one of the following:

(a) shows the mark in color, and retains the submitted color claim and description;

(b) shows the mark in black and white without color lining; and (b) a statement authorizing deletion of the color claim and description. In the present case, color is not material to the commercial impression of the mark and therefore can be deleted from the drawing of the mark. 37 C.F.R. §2.72; TMEP §§807.07(d) and 807.14 et seq.

If the applicant retains the black and white drawing, it must address the grey tones in the mark and clarify that the color gray is intended to indicate shading or contrast only. Applicant may do this by submitting a statement that “the mark is not in color.”

Substitute Specimen

The applicant’s substitute specimen is a repetition of the originally submitted specimen. As such, it fails to function for the reasons set forth previously. No mention of the recited services appears on the face of the specimen. Moreover, the submitted specimen is now in black and white and the drawing of the mark was filed in color.

Please note, if the applicant retains the color mark, color claim and description, then applicant must submit (1) a specimen showing use of the proposed mark with the appropriate color(s) claimed as a feature of the mark, and (2) 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); TMEP §§904.02(a) and 904.09.

Applicant has claimed the colors black, white and blue as a feature of the mark. However, the specimen submitted with the application does not demonstrate use of the mark as shown in the drawing because it does not show the mark in color.

Applicant may overcome the refusal to register this mark based on the specimenby amending the application to assert a different basis for filing the application and submitting the requirements for the new basis. TMEP §§806.03 et seq.

In this case, applicant may wish to amend the application to assert a Section 1(b) basis. However, amendment of the basis would not overcome the refusal of registration based on the deletion of color in the mark.

Where an application is based on a bona fide intention to use the mark in commerce, applicant must submit the following statement:

Applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application as of the filing date of the application.

This statement must be verified with a notarized affidavit or a signed declaration under 37 C.F.R. §§2.20 and 2.33. Trademark Act Section 1(b), 15 U.S.C. §1051(b); 37 C.F.R. §2.34(a)(2); TMEP §806.01(b).

Other Requirements

The applicant has satisfied the remaining requirements raised in the first action.

John T. Lincoski /JTL/

Trademark Attorney

Law Office 113

(571)272-9436

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.