Offc Action Outgoing

BUILDER MT MANAGEMENT TECHNOLOGY

MITEK HOLDINGS, INC.

Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

    SERIAL NO:           76/617859

 

    APPLICANT:         Builder MT, LLC

 

 

        

*76617859*

    CORRESPONDENT ADDRESS:

  ANTHONY L.  LEFFERT

  ROBINSON WATERS & O'DORISIO

  1099 18TH STREET, SUITE 2600

  DENVER, COLORADO 80202

 

RETURN ADDRESS: 

Commissioner for Trademarks

P.O. Box 1451

Alexandria, VA 22313-1451

 

 

 

 

    MARK:       BUILDER MT MANAGEMENT TECHNOLOGY

 

 

 

    CORRESPONDENT’S REFERENCE/DOCKET NO:   N/A

 

    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.

 

 

 

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  76/617859

 

The assigned examining attorney has reviewed the referenced application and determined the following.

 

No Conflicting Marks Noted

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. §1052(d).  TMEP §704.02.

 

Drawing

Applicant must submit a new drawing showing the entire mark clearly and conforming to 37 C.F.R. §§2.52, 2.53(c) and 2.54(e).  The current drawing is not acceptable because the depiction of the mark is unclear; the drawing is a photocopy of the mark that will not reproduce satisfactorily.

 

The requirements for a special-form drawing are as follows:

 

  • The drawing must appear in black and white if color is not claimed as a feature of the mark, or in color if color is claimed as a feature of the mark.

 

  • Drawings must be made with a pen or by a process that will provide high definition when copied.  A photolithographic, printer’s proof copy, or other high quality reproduction of the mark may be used.  All lines must be clean, sharp and solid, and must not be fine or crowded.

 

  • The image must be no larger than 3.15 inches (8 cm) high by 3.15 inches (8cm) wide.

 

  • If reduction of the mark to the required size renders any details illegible, then applicant may insert a statement in the application to describe the mark and these details.

 

37 C.F.R. §§2.52(b); TMEP §§807.04 et seq.

 

If submitted on paper, the Office prefers that the drawing be depicted on a separate sheet of non-shiny, white paper that is 8 to 8.5 inches wide and 11 to 11.69 inches long (20.3 to 21.6 cm. wide and 27.9 to 29.7 cm. long).  One of the shorter sides of the sheet should be regarded as its top edge. In addition, the drawing should include the caption “DRAWING PAGE” at the top of the drawing beginning one-inch (2.5 cm) from the top edge.  37 C.F.R. §2.54; TMEP §§807.06 et seq.

 

The Office strictly enforces these drawing requirements.

Disclaimer

The applicant must disclaim the descriptive wording “MANAGEMENT[1] TECHNOLOGY[2]” apart from the mark as shown, because it merely describes the nature of the goods and services. Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a). 

 

Trademark Act Section 6(a), 15 U.S.C. §1056(a), permits the Office to require a disclaimer of an unregistrable component of a mark.  Trademark Act Section 2(e), 15 U.S.C. §1052(e), bars the registration of a mark which is merely descriptive or deceptively misdescriptive, or primarily geographically descriptive of the goods. Therefore, the examining attorney may require the disclaimer of a portion of a mark which, when used in connection with the goods or services, is merely descriptive or deceptively misdescriptive, or primarily geographically descriptive.  If an applicant does not comply with a disclaimer requirement, the examining attorney may refuse registration of the entire mark.  TMEP §1213.01(b).

 

A disclaimer does not remove the disclaimed matter form the mark.  It is simply a statement that the applicant does not claim exclusive rights in the disclaimed wording or design apart from the mark as shown. 

 

The following cases explain the disclaimer requirement more fully: In re Kraft, Inc. 218 USPQ 571 (TTAB 1983); In re EBS Data Processing, Inc., 212 USPQ 964 (TTAB 1981); In re National Presto Industries, Inc., 197 USPQ 188 (TTAB 1977); In re Pendelton Tool Industries, Inc., 157 USPQ 114 (TTAB 1968). 

 

The computerized printing format for the Trademark Official Gazette requires a standard form for a disclaimer.   TMEP §1213.08(a)(i).  A properly worded disclaimer should read as follows:

 

No claim is made to the exclusive right to use MANAGEMENT TECHNOLOGY apart from the mark as shown.

 

See In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).

 

Specimen

For the goods listed in International Class 9, 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, 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.

 

The current specimens of record comprise a brochure and screen shots from the applicant’s website and are unacceptable as evidence of actual trademark use because they do not show use of the mark on the goods.  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.  In re Bright of America, Inc., 205 USPQ 63 (TTAB 1979); See In re Ultraflight Inc., 221 USPQ 903 (TTAB 1984); TMEP §§904.05 and 904.07.

 

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.

 

The specimens are acceptable for the services listed in International Class 42.

 

Declaration

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 at least as early as the filing date of the application; 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 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.

 

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, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at http://www.gov.uspto.report/teas/index.html.

 

 

/alrademacher/

April Rademacher

Examining Attorney

Law Office 102

(571) 272-9210

(571) 273-9102 (fax)

 

 

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 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.

 



[1]

man·age·ment

 
man·age·ment (màn¹îj-ment) noun

Abbr. mgt., mgmt.

1.    The act, manner, or practice of managing; handling, supervision, or control: management of a crisis; management of factory workers.

2.    The person or persons who control or direct a business or other enterprise.

3.          Skill in managing; executive ability.[1]

[2]

tech·nol·o·gy

 
tech·nol·o·gy (tèk-nòl¹e-jê) noun

plural tech·nol·o·gies

Abbr. technol.

1.    a. The application of science, especially to industrial or commercial objectives. b. The scientific method and material used to achieve a commercial or industrial objective.

2.      Anthropology. The body of knowledge available to a civilization that is of use in fashioning implements, practicing manual arts and skills, and extracting or collecting materials.


 [Greek tekhnologia, systematic treatment of an art or craft : tekhnê, skill + -logia, -logy.][2]


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