UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

SOU OFFICE ACTION

 

TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.

 

ISSUE/MAILING DATE:

 

This letter responds to applicant’s communication filed on May 17, 2007 in which applicant:

 

(1)   filed its Statement of Use (SOU) and

(2)   submitted specimens for its goods in Classes 014, 018 and 026 and its services in Class 035.

 

Number (1) is acceptable and made of record.  Number (2) is not acceptable for the following reasons.

 

SPECIMENS NOT ACCEPTABLE – IMAGE OF MARK ONLY - CLASSES 014, 018 AND 026

 

The specimens are not acceptable because they are merely a picture or rendering of the applied-for mark and do not show the applied-for mark in actual use in commerce on the goods or packaging for the goods.  Section 45 of the Trademark Act requires use “on the goods or their containers or the displays associated therewith or on tags or labels affixed thereto.”  15 U.S.C. §1127; see 37 C.F.R. §2.56(b)(1). 

 

A statement of use must include a specimen showing the applied-for mark in use in commerce for each class of goods in the statement of use.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051 and 1127; 37 C.F.R. §2.88(b)(2).

 

Therefore, applicant must submit the following:

 

(1)       A substitute specimen showing the mark in use in commerce for each class of goods specified in the statement of use; and

 

(2)       The following statement, verified with an affidavit or a signed declaration under 37 C.F.R. §2.20:  “The substitute specimen was in use in commerce prior to the expiration of the time allowed applicant for filing a statement of use.”  37 C.F.R. §2.59(b)(2); TMEP §904.09.  If submitting a specimen requires an amendment to the dates of use, applicant must also verify the amended dates.  37 C.F.R. §2.71(c).

 

Examples of 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.

 

The substitute specimen must:  (1) be the proper form of specimen for goods, such as a label, tag or product packaging and (2) must show the proposed mark on or affixed to the goods or packaging for the goods.  If applicant submits substitute specimens, then applicant must explicitly state the nature of the specimens.  For example, if applicant is submitting a tag for each class of its goods, then applicant must state for the record that the specimen is a tag.

 

Pending a proper response, registration is refused because the specimen does not show the applied-for mark in use in commerce as a trademark.  15 U.S.C. §§1051 and 1127; 37 C.F.R. §§2.56 and 2.88.

 

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

 

SPECIMEN NOT ACCEPTABLE – DOES NOT SHOW USE WITH SPECIFIED SERVICES – CLASS 035

 

The specimen is not acceptable because it does not show the applied-for mark used in connection with any of the goods and/or services specified in the statement of use.  A statement of use must include a specimen showing the applied-for mark in use in commerce for each class of goods and/or services in the statement of use.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051 and 1127; 37 C.F.R. §§2.56 and 2.88(b)(2); TMEP §§904 and 1109.09(b). 

 

In the present case, the specimen is an image of the mark only and does not reference or mention applicant’s Class 035 retail store services.  The substitute specimen must:  (1) be the proper form of specimen for services, such as an advertisement, (2) must show the proposed mark and (3) must reference or mention the services recited in the Notice of Allowance.

 

Therefore, applicant must submit the following:

 

(1)   A substitute specimen showing use of the mark for each class of goods and/or services in the statement of use; and

 

(2)   The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “The substitute specimen was in use in commerce prior to the expiration of the time allowed applicant for filing a statement of use.”  37 C.F.R. §2.59(b)(2); TMEP §904.09.  If submitting a specimen requires an amendment to the dates of use, applicant must also verify the amended dates.  37 C.F.R. §2.71(c).

 

Examples of specimens for services are signs, photographs, brochures, website printouts or advertisements that show the mark used in the sale or advertising of the services.  TMEP §§1301.04 et seq.

 

Pending a proper response, registration is refused because the specimen does not show the applied-for mark in use in commerce as a trademark or service mark for the identified goods or services.  15 U.S.C. §§1051 and 1127; 37 C.F.R. §§2.56 and 2.88.

 

Applicant may not withdraw the statement of use.  37 C.F.R. §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 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 applicant submits a response via electronic means, please note that the substitute specimen must be a digitized image submitted in JPG or PDF format.  37 C.F.R. §2.56(d)(4); TMEP §904.02.

 

To expedite prosecution of this application, applicant is encouraged to file its response to this Office action through the Trademark Electronic Application System (TEAS), available at http://www.gov.uspto.report/teas/index.html.

 

 

/Attiya Malik/

Trademark Examining Attorney

Law Office 112

(O) 571-272-5889

(F) 571-273-5889

 

 

RESPOND TO THIS ACTION: If there are any questions about the Office action, please contact the assigned examining attorney. A response to this Office Action should be filed using the Office’s Response to Office action form available at http://www.gov.uspto.report/teas/eTEASpageD.htm.  If notification of this Office action was received via e-mail, no response using this form may be filed for 72 hours after receipt of the notification.  Do not attempt to respond by e-mail as the USPTO does not accept e-mailed responses.

 

If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response.  Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.

 

STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov.  When conducting an online status check, print and maintain a copy of the complete TARR screen.  If the status of your application has not changed for more than six months, please contact the assigned examining attorney.