To: | EVONIK DEGUSSA GMBH (sdwoldow@sgrlaw.com) |
Subject: | TRADEMARK REGISTRATION NO. 3037400 - CATACXIUM - 032301.401 |
Sent: | 07/19/12 08:09:11 AM |
Sent As: | ecom106@uspto.gov |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT REGISTRANT’S TRADEMARK REGISTRATION
REGISTRATION NO. 3037400
REGISTRANT: EVONIK DEGUSSA GMBH
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CORRESPONDENT’S ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/teas/eTEASpageC.htm
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MARK: CATACXIUM
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CORRESPONDENT’S REFERENCE/DOCKET NO. 032301.401
CORRESPONDENT’S EMAIL ADDRESS: |
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ISSUE/MAILING DATE: 7/19/2012
Registration Number 3037400
The Section 8 Affidavit, filed on July 2, 2012, is not accepted for the reason(s) set forth below.
A specimen for a service mark must show use of the mark “in the sale or advertising of services.” See Trademark Act Section 45, 15 U.S.C. §1127; 37 C.F.R. §2.56(b)(2). Specimens for service marks must show an association between the mark and the services identified in the registration. In re Adair, 45 USPQ2d 1211, 1215 (TTAB 1997). If the specimen does not show the mark with reference to, or association with, the services, the specimen fails to show service mark usage. See In re DSM Pharms., Inc., 87 USPQ2d 1623, 1625-26 (TTAB 2008).
Therefore, the owner must submit the following:
(1) A substitute specimen showing current use of the registered mark in commerce for each class of services specified in the registration; 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 during the relevant period for filing the 6-year Section 8.” 37 C.F.R. §2.161(g); TMEP §1604.12(c).
Examples of specimens for services are signs, photographs, brochures, website printouts or advertisements that show the mark used in the actual sale or advertising of the services. See TMEP §§1301.04 et seq.
The owner was using the mark in commerce on or in connection with the goods and/or services identified in the registration for which use of the mark in commerce is claimed, as evidenced by the submitted specimen, during the relevant period for filing the 6-year Section 8.
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 statement may jeopardize the validity of this document, declares that s/he is properly authorized to execute this document on behalf of the owner, and all statements made of his/her own knowledge are true and that all statements made on information and belief are believed to be true.
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Signature of Authorized Person
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Type or Print Name
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Date
RESPONSE TIME DEADLINE: A complete response must be received within 6 months from the issuance date of this Office action. The owner must respond to all inquiries set forth in this Office action to avoid cancellation of Int. Cl. #42 from the registration. 37 C.F.R. §2.163(b)-(c); TMEP §§1604.16, 1604.17(b).
DEFICIENCY SURCHARGE REQUIRED: The owner must submit a $100 deficiency surcharge with its response to this Office action. 37 C.F.R. §§2.6, 2.164(a)(2); TMEP §1604.17(b).
For more information about this, please contact the Post Registration Division at 571 272 9500.
/Concetta A. Butler/
Paralegal Specialist
ITU/Divisional Unit
571 272 9494
571 273 9494 (fax)571 272 9500
TO RESPOND TO THIS LETTER: Use the Trademark Electronic Application System (TEAS) Response to Post-Registration Office action form at http://www.gov.uspto.report/teas/eTEASpageC.htm. Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the registration. For technical assistance with online forms, e-mail TEAS@uspto.gov.
WHO MUST SIGN THE RESPONSE: It must be personally signed by (1) an individual registrant; (2) someone with legal authority to bind registrant (i.e., a corporate officer, a general partner, all joint applicants); or (3) an authorized attorney, if one is appointed to represent registrant. If a registrant is represented by an attorney, the attorney must sign the response.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/teas/eTEASpageE.htm.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED SPECIALIST.