UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

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. 

 

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  76/618722

 

STATUS

 

The FINAL refusal dated January 30, 2006 has been withdrawn.

 

This letter is written in response to the applicant’s communication dated December 14, 2005, in which the applicant 1) amended the identification of goods.

 

The amended identification of goods is unacceptable as overly broad as set forth below.

 

 

 

 

 

 

The following new issue has come to the attention of the examining attorney.

 

SPECIMEN

 

The specimen is unacceptable as evidence of actual trademark use because it is merely advertising. Invoices, announcements, order forms, bills of lading, leaflets, brochures, publicity releases and other printed advertising material generally are not acceptable specimens for goods.  In re Bright of America, Inc., 205 USPQ 63 (TTAB 1979); TMEP sections 905.05 and 905.07.  See In re Ultraflight Inc., 221 USPQ 903 (TTAB 1984).   The applicant must submit a specimen showing the mark as used in commerce.  37 C.F.R. Section 2.56.  Examples of acceptable specimens are tags, labels, instruction manuals, containers or photographs that show the mark on the goods or packaging.  The applicant must verify, with an affidavit or a declaration under 37 C.F.R. Section 2.20, that the substitute specimen was in use in commerce at least as early as the filing date of the application.  Jim Dandy Co. v. Siler City Mills, Inc., 209 USPQ 764 (TTAB 1981); 37 C.F.R. Section 2.59(a); TMEP section 905.10.

 

Keep in mind that specimens which are advertising material may be acceptable specimens if they meet the criteria set forth in the Lands' End Inc. v. Manbeck, 797 F. Supp. 511, 24 USPQ2d 1314 (E.D. Va. 1992) decision which are: (1) it includes a picture of the relevant goods, (2) it includes the mark sufficiently near the picture of the goods to associate the mark with the goods, and (3) it includes information necessary to order the goods.  Any form of advertising which satisfies these criteria should be construed as a display associated with the goods.  TMEP 905.06(a)

 

DECLARATION

 

The substitute specimen was in use in commerce at least as early as the filing date of the application.

 

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; 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)

 

 

 

 

 

 

 

 

The following requirement for an acceptable and definite identification of goods is maintained and continued.

 

IDENTIFICATION OF GOODS

 

The wording in the recitation of goods is too broad because it includes goods classified in other classes.  Applicant must specify the nature of the plastic inserts. If the plastic inserts are in the nature of bags, they would belong in International Class 016, while plastic box-like inserts would be in International Class 021. TMEP section 1402.01 and 1402.03. Applicant must limit the identification to one class paid for, or submit additional fees to prosecute this as a combined multiple class application.  See below for suggestions.

 

“Packaging products that contain scented plastic, for food and beverage, namely, plastic packaging bags.” International Class 016

 

“Packaging products that contain scented plastic, for food and beverage, namely, plastic bottles, plastic cups, plastic trays, plastic lined boxes.”   International Class 021

 

Where possible, the examining attorney has provided guidelines to assist the applicant in amending the existing identification of goods and services. The applicant may wish to consult the on-line identification manual on the USPTO homepage for acceptable common names of goods and services; and classification therefor.  http://tess2.gov.uspto.report/netahtml/tidm.html.

 

Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  37 C.F.R. Section 2.71(a); TMEP section 1402.06.  Therefore, the applicant may not amend to include any goods that are not within the scope of the goods recited in the present identification.

 

REQUIREMENTS FOR A COMBINED APPLICATION

 

If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the following for those goods based on an intent to use the mark in commerce under Trademark Act Section 1(b):

 

Applicant must list the goods by international class with the classes listed in ascending numerical order.  TMEP § 1403.01; and

 

Applicant must submit a filing fee for each international class of goods not covered by the fee already paid (current fee information should be confirmed at http://www.uspto.gov).  37 C.F.R. §2.86(a)(2); TMEP §§810 and 1403.01.

 

 

 

 

 

 

 

 

 

Gretta Yao

/Gretta Yao/

Attorney

United States Patent and Trademark Office

Law Office 105

T. 571.272.9313

F. 571.273.9313

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond using the Office’s Trademark Electronic Application System (TEAS) Response to Office action form available on our website at http://www.gov.uspto.report/teas/index.html.  If the Office action issued via e-mail, you must wait 72 hours after receipt of the Office action to respond via TEAS.  NOTE:  Do not respond by e-mail.  THE USPTO WILL NOT ACCEPT AN E-MAILED RESPONSE.
• 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.  NOTE:  The filing date of the response will be the date of receipt in the Office, not the postmarked date.  To ensure your response is timely, use a certificate of mailing.  37 C.F.R. §2.197.

 

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.