UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/606258
APPLICANT: Backyard Kitchen Concepts, Inc.
|
|
CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
|
MARK: CALISE
|
|
CORRESPONDENT’S REFERENCE/DOCKET NO: OUTKC.0005T
CORRESPONDENT EMAIL ADDRESS: |
Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
|
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 76/606258
The assigned examining attorney has reviewed the statement of use filed on October 2, 2006 and has determined the following.
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 CALISE, and the specimen shows the mark as CALISE GOURMET.[1] 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.
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)
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
/Julie A. Watson/
Trademark Attorney
Law Office 109
(571) 272-9236
(571) 273-9109 (fax)
HOW TO RESPOND TO THIS OFFICE ACTION:
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.
[1] A second specimen submitted shows the mark used on packaging for barbeque tongs. This specimen is also unacceptable because barbeque tongs are properly classified in International Class 21 not International Class 11.