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  76/643371

 

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

 

Search for Conflicting Marks

 

The Office records have been searched and no similar registered or pending mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02.

 

 

 

 

Standard Character Claim

 

Applicant must submit the following standard character claim:  “The mark consists of standard characters without claim to any particular font style, size, or color.”  37 C.F.R. §2.52(a); TMEP §807.03(a).

 

Drawing and Specimen

 

The mark as depicted on the drawing does not agree with the mark as it appears on the specimen, and clarification is required.  37 C.F.R. §2.51; TMEP §§807.12 and 807.12(a).  In the present case, the drawing displays the mark as AMICI, and the specimen shows the mark as AMICI with other descriptive and/or generic terms present.  Applicant may not submit an amended drawing to conform to the display on the specimen because the character of the mark would be materially altered, i.e., the mark on the specimens creates a different commercial impression from the mark on the drawing.  37 C.F.R. §2.72(a); TMEP §§807.12, 807.12(a), 807.14 et seq and 904.09. 

 

Therefore, applicant must do one of the following:

 

(1)   submit a substitute specimen showing use of the mark as it appears on the drawing, with a statement that “the substitute specimen was in use in commerce at least as early as the filing date of the application,” verified with an affidavit or a signed declaration under 37 C.F.R. §2.20; 37 C.F.R. §§2.59(a) and 2.72(a); TMEP §904.09; or

 

(2)   amend the basis to Section 1(b) and satisfy all the requirements for this new basis.  TMEP §806.03(c).

 

The mark in a drawing cannot be amended if the change would materially alter the mark.  TMEP §807.14.  The Office determines whether a proposed amendment materially alters a mark by comparing the proposed amendment with the drawing of the mark filed with the original application.  37 C.F.R. §2.72; TMEP §807.14(c).

 

If republication of the amended mark would be necessary in order to provide proper notice to third parties for opposition purposes, then the mark has been materially altered and the amendment is not permitted.  In re Who? Vision Systems Inc., 57 USPQ2d 1211, 1218 (TTAB 2000).  “The modified mark must contain the essence of the original mark, and the new form must create the impression of being essentially the same mark.”  Visa International Service Association v. Life Code Systems, Inc., 220 USPQ 740, 743 (TTAB 1983).  “That is, the new and old forms of the mark must create essentially the same commercial impression.”  In re Nationwide Industries Inc., 6 USPQ2d 1882, 1885 (TTAB 1988).

 

If applicant does amend the application to seek registration on an intent to use basis, applicant must submit the following statement:

 

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 as of the filing date of the application.

 

This statement must be verified with a notarized affidavit or a signed declaration under 37 C.F.R. §§2.20 and 2.33.  Trademark Act Section 1(b), 15 U.S.C. §1051(b); 37 C.F.R. §2.34(a)(2); TMEP §806.01(b).

 

Translation

 

Applicant must submit an English translation of the mark.  37 C.F.R. §2.61(b); TMEP §809.  The following translation statement is suggested:  “The English translation of AMICI is FRIEND.”

 

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

 

 

 

/Michael P. Keating/

Trademark Attorney

Law Office 101

(571) 272-9177

(571) 273-9101  (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 has been 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.