UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

EXAMINER’S AMENDMENT/PRIORITY ACTION

 

OFFICE SEARCH:  The examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d).  TMEP section 704.02.   

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE.   This case will be given priority as an amended case if you respond to the requirements stated below within two months. 

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.

 

 

Serial Number 76/613791

 

EXAMINER'S AMENDMENT

 

In accordance with the authorization granted by Rachelle Kagan on January 21, 2005, the application has been AMENDED as indicated below.  If the identification of goods or services has been amended, please note that any future amendments must be in accordance with 37 C.F.R. 2.71(a); TMEP section 1402.07(e).  Please advise the undersigned if there is an objection to the amendment.   

 

Identification of Goods and/or Services

The identification of goods and/or services for International Class 027 is amended to read as follows:

 

Vinyl floor coverings in sheet and tile forms.

 

International Class 019 Added to the Application

The identification of goods and/or services for International Class 019 has been added to the records and reads as follows:

 

Non metal flooring, namely, rubber flooring and floor tiles.

 

PRIORITY ACTION

 

This case will be given priority as an amended case if you respond to the requirements stated below within two months.

 

Specimen Does Not Indicate Use In Relation To The Identified Goods For International Class 019 ONLY

The applicant’s specimen is unacceptable as evidence of actual trademark use for the goods listed in International Class 019.  The current specimen comprises does not show use of the mark in relation to the rubber flooring products specified in the application.  Invoices, announcements, order forms, bills of lading, leaflets, brochures, publicity releases, and other printed advertising material, while normally acceptable for showing use in connection with services, generally are not acceptable specimens for showing trademark use in connection with goods.  See In re Bright of America, Inc., 205 USPQ 63 (TTAB 1979); In re Ultraflight Inc., 221 USPQ 903 (TTAB 1984); TMEP §§ 904.05 and 904.07.  Please Note:  The specimen is acceptable as evidence of actual trademark use for the goods identified in International Class 027 and is accepted for the applicant’s vinyl flooring products only.

 

A substitute specimen is required for the goods listed in International Class 019.  Examples of acceptable specimens for goods are tags, labels, instruction manuals, containers, and 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 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 listed in the application, 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. §§2.56 and 2.59(a); TMEP §§904.09 and 1104.09(e).  For your convenience, the examining attorney has enclosed a properly worded declaration below.

 

If the applicant submits its response via electronic means, the substitute specimen must be a digitized image submitted in .jpg format.  37 C.F.R. §2.56(d)(4).

 

Suggested Affidavit Form

The following is a properly worded declaration under 37 C.F.R. §2.20.  At the end of the response, the applicant should insert the declaration signed by someone authorized to sign under 37 C.F.R. §2.33(a).

 

The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that the facts set forth in this application are true, that the applicant is the owner of the mark sought to be registered, that the applicant is using the mark in commerce in connection with the goods and/or services identified in the application, that the attached specimen was in use in commerce at least as early as the filing date of the application, that all statements made of his/her own knowledge are true, and that all statements made on information and belief are believed to be true.

____________________________

(Signature)

_____________________________

(Print or Type Name and Position)

_____________________________

(Date)

 

If the declaration is filed electronically through TEAS, then applicant should sign the declaration by entering a “symbol” that applicant has adopted as a signature (e.g., /john doe/, /drl/, and /544-4925/).  The Office will accept any combination of letters, numbers, spaces and/or punctuation marks as a valid signature if it is placed between two forward slash (“/”) symbols.  37 C.F.R. §§ 2.33(d) and 2.193(c)(1)(iii); TMEP §§304.08 and 804.05.

 

Please Note:  If the applicant does not have an acceptable substitute specimen that was in use in commerce prior to the filing date of the application, the applicant may overcome this refusal only by amending the filing basis of the application. TMEP §§806.03 et seq.; §904.09.  In such a case, the applicant may wish to amend the application to assert a Section 1(b) basis.  If the applicant chooses to amend its filing basis to Section 1(b) the applicant must submit the following statement in order to satisfy the application requirements for asserting a basis for registration under Section 1(b) of the Trademark Act:

 

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 since the filing date of the application.

 

Trademark Act Section 1(b), 15 U.S.C. § 1051(b).  This statement must be verified with a notarized affidavit or a signed declaration under 37 C.F.R, §2.20.  Trademark Act Section 1(b), 15 U.S.C. §1051(b); 37 C.F.R. §2.34(a)(2); TMEP §§806.01(b) and 804.02.  Please reference the enclosed declaration above.

 

Applicant’s Response

No set form is required for response to this Office action.  The applicant must respond to each point raised. The applicant must sign the response.  In addition to the identifying information required at the beginning of this letter, the applicant should provide a telephone number to speed up further processing.

 

NOTICE:  FEE CHANGE   

 

Effective January 31, 2005 and pursuant to the Consolidated Appropriations Act, 2005, Pub. L. 108-447, the following are the fees that will be charged for filing a trademark application:

 

(1) $325 per international class if filed electronically using the Trademark     Electronic Application System (TEAS); or 

 

(2)   $375 per international class if filed on paper.

 

These fees will be charged not only when a new application is filed, but also when payments are made to add classes to an existing application. If such payments are  submitted with a TEAS response, the fee will be  $325 per class, and if such payments are made  with a paper response, the fee will be $375 per class.

 

The new fee requirements will apply to any fees filed on or after January 31, 2005.

 

NOTICE:  TRADEMARK OPERATION RELOCATION

 

The Trademark Operation has relocated to Alexandria, Virginia.  Effective October 4, 2004, all Trademark-related paper mail (except documents sent to the Assignment Services Division for recordation, certain documents filed under the Madrid Protocol, and requests for copies of trademark documents) must be sent to:

 

Commissioner for Trademarks

P.O. Box 1451

Alexandria, VA  22313-1451

 

Applicants, registration owners, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at www.uspto.gov.

 

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

/Michael Tanner/

Michael Tanner

Trademark Attorney

Law Office 102

Telephone: 571-272-9706

 

How to respond to this Office Action:

 

You may respond formally using the Office's Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://eteas.gov.uspto.report/V2.0/oa242/WIZARD.htm and follow the instructions therein, but you must wait until at least 72 hours after receipt if the office action issued via e-mail).  PLEASE NOTE: Responses to Office Actions on applications filed under the Madrid Protocol (Section 66(a)) CANNOT currently be filed via TEAS.

 

To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the serial number, law office and examining attorney’s name on the upper right corner of each page of your response.

 

To check the status of your application at any time, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.gov.uspto.report/

 

For general and other useful information about trademarks, you are encouraged to visit the Office’s web site at http://www.gov.uspto.report/main/trademarks.htm