UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/649894
APPLICANT: Winsource Industries, Ltd.
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: NOVITECH
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CORRESPONDENT’S REFERENCE/DOCKET NO: 9018-TM
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.
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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 76/649894
The assigned trademark examining attorney has reviewed the referenced application and has determined the following:
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.
Applicant should note the following ground for refusal.
The Examining Attorney refuses registration because the proposed mark does not function as a trademark. Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§1051, 1052 and 1127. The proposed mark neither identifies and distinguishes the goods of the applicant from those of others nor indicates their source. In Re Remington Products Inc., 3 USPQ2d 1714 (TTAB 1987). TMEP §§1202 et seq. Please note that the proposed mark does not function as a trademark because the specimen submitted with the application is unacceptable as evidence of actual trademark use; therefore, the proposed mark cannot identify and distinguish the applicant's goods from those of others nor indicate their source.
The specimen is unacceptable as evidence of actual trademark use because it does not show use of the proposed mark on the goods, namely, “paper shredder[s]” or “laminators” identified in the recitation of goods for this application. Instead, the specimens are clearly identified as “CD Shredders.” Invoices, announcements, order forms, bills of lading, leaflets, brochures, publicity releases and other advertising material generally are not acceptable specimens. In re Bright of America, Inc., 205 USPQ 63 (TTAB 1979); TMEP §§904.05 and 904.07. See In re Ultraflight Inc., 221 USPQ 903 (TTAB 1984).
Accordingly, the applicant must submit a specimen showing the mark as it is used in commerce. 37 C.F.R. § 2.56. Examples of acceptable specimens are tags, labels, containers, and photographs that show the mark on the goods or packaging. TMEP §§904.04 et seq. The applicant must verify, with an affidavit or a declaration under 37 C.F.R. §2.20, that the substitute specimen was in use in commerce prior to the filing of the application. 37 C.F.R. §2.59(a); TMEP § 904.09.
If an amendment of the dates-of-use clause is necessary in order to state the correct dates of first use, the applicant must verify the amendment with an affidavit or a declaration in accordance with 37 C.F.R. §2.20. 37 C.F.R. §2.71(c); TMEP §903.05.
The following is a properly worded declaration under 37 C.F.R. §2.20. Applicant should add the following declaration paragraph to the end of its response, and include a dated signature by a person authorized under 37 C.F.R. §2.33(a). 37 C.F.R. §2.20.
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 substitute specimen was in use in commerce prior to the filing of the application; 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.
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(Signature)
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(Print or Type Name and Position)
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(Date)
Pending an adequate response to the above, the examining attorney refuses registration under Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§1051, 1052 and 1127, because the record does not show use of the proposed mark as a trademark.
Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.
The applicant may overcome the refusal to register this mark by amending the application to assert a different basis for filing the application and submitting the requirements for the new basis. TMEP §§806.03 et seq. In this case, applicant may wish to amend the application to assert a Section 1(b) basis.
If the applicant amends its basis, the applicant must also provide a signed verification or signed declaration attesting that applicant 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 application filing date. 37 C.F.R. §§2.34(a)(2)(i), (a)(3)(i) and (a)(4)(ii); TMEP §§804.02, 806.01(b), 806.01(c), 806.01(d) and 1101.
The following declaration is provided for the applicant's convenience:
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 he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. §1051(b), 1126(d) or 1126(e), he/she believes applicant to be entitled to use such mark in commerce; that the applicant 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 application filing date; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; and that all statements made of his/her own knowledge are true and all statements made on information and belief are believed to be true.
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(Signature)
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(Print or Type Name and Position)
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(Date)
If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following identification issues. Resolution of the identification issues discussed below is essential but is not, alone, sufficient to overcome the foregoing refusal.
The identification of goods is unacceptable as indefinite. The applicant must clarify the identification as follows. TMEP §1402.01.
The wording “Paper shredder products” is unacceptably indefinite as to the type of goods that the applicant produces. The applicant must clarify by specifically listing the goods comprising the “products” using common commercial or generic terms. The applicant may clarify by changing this wording to the following, if accurate: “Paper shredder products, namely, {specify goods comprising products by listing them by common commercial or generic name}” in International Class 016.
The wording “laminators” is indefinite as to the intended use or purpose of the goods. The applicant may clarify by changing this wording to the following, if accurate: “document laminators for office use” in International Class 016.
For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.
Please note that, while the identification of goods may be amended to clarify or limit the goods, adding to the goods or broadening the scope of the goods is not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, applicant may not amend the identification to include goods that are not within the scope of the goods set forth in the present identification.
Multiple Class Applications
Applicant must clarify the number of classes for which registration is sought. The submitted filing fees are insufficient to cover all the classes in the application. Specifically, the application identifies goods and/or services that are classified in at least two (2) International Classes, however applicant paid the fee for only one (1) International Class.
If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the requirements below for those goods based on actual use in commerce under Trademark Act Section 1(a):
(1) Applicant must list the goods/services by international class with the classes listed in ascending numerical order;
(2) Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid (current fee information should be confirmed at http://www.uspto.gov); and
(3) For each additional class of goods and/or services, applicant must submit:
(a) dates of first use of the mark anywhere and dates of first use of the mark in commerce, or a statement that the dates of use in the initial application apply to that class; the dates of use, both anywhere and in commerce, must be at least as early as the filing date of the application;
(b) one specimen showing use of the mark for each class of goods and/or services; the specimen must have been in use in commerce at least as early as the filing date of the application;
(c) a statement that “the specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application;” and
(d) verification of the statements in 3(a) and 3(c) in an affidavit or a signed declaration under 37 C.F.R. §2.20. (NOTE: Verification is not required where (1) the dates of use for the added class are stated to be the same as the dates of use specified in the initial application, or (2) the original specimens are acceptable for the added class.)
37 C.F.R. §§2.6, 2.34(a), 2.59, 2.71(c), and 2.86(a); TMEP §§810, 904.09, 1403.01 and 1403.02(c).
If applicant has any questions about its application or needs assistance in responding to this Office Action please telephone the assigned trademark examining attorney directly at the number listed below.
/Amy C. McMenamin/
Trademark Attorney, Law Office 113
U.S. Patent & Trademark Office
Phone 571-272-8854
Fax 571-273-8854
HOW TO RESPOND TO THIS OFFICE ACTION:
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.