Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.

 

ISSUE/MAILING DATE:

 

THIS IS A FINAL ACTION.

 

 

This Final Office Action is written in response to the applicant’s response to office action letter dated August 20, 2008.  The examining attorney has reviewed the applicant’s response and accepted all but the following. 

 

The following requirements are now made FINAL:  Mark Differs on Drawing and Specimen – Clarification Required.  See37 C.F.R. §2.64(a).

 

Informal Issue:

 

Mark Differs on Drawing and Specimen – Material Alteration - Final:

 

As previously stated, the proposed amendment of the drawing is unacceptable because it would materially alter the essence or character of the mark.  37 C.F.R. §2.72; TMEP §§807.14 et seq.  In this case, the original drawing displays the mark as XTREME BRITE (in uppercase letters) to the right of a moon design, while the specimen shows the mark as XTREME BRITE (in stylized font with an enlarge letter X and a star design located above the letter “i”) to the superimposed over a moon design.  The examining attorney finds the additional design elements create a separate commercial impression from the mark on the original drawing.

 

The applicant states that the wording XTREME BRITE is a word mark that should be treated separately from the moon design.  This analysis is incorrect.  The applicant’s drawing as a whole depicts a special form drawing and the written element cannot be separated as a standard character mark.[1]  The applicant would have had to have filed two separate applications for the applicant’s analysis to be correct, whereby one application encompasses the moon design and the second application encompasses the wording in standard character format.  A standard character mark cannot contain a design element. TMEP §807.03.

 

The mark on the drawing must be a substantially exact representation of the mark as used on or in connection with the goods and/or services, as shown by the specimen.  37 C.F.R. §2.51(b); TMEP §807.12(a); see 37 C.F.R. §2.72(b)(1).  However, applicant may not amend the mark on the drawing to conform to the display on the specimen because the essence or character of the mark would be materially altered; in other words, the mark on the specimen creates a different commercial impression from the mark on the drawing.  See 37 C.F.R. §2.72(b); TMEP §§807.12(a), 807.14 et seq.

 

Therefore, applicant must submit the following:

 

(1)     A substitute specimen showing use in commerce of the mark on the drawing.  See 37 C.F.R. §2.59(b)(2); TMEP §904.05.; and

 

(2)     The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §§2.20, 2.33: “The substitute specimen was in use in commerce prior to the expiration of the time allowed applicant for filing a statement of use.”  See 37 C.F.R. §2.59(b)(2); TMEP §904.05.  If submitting a specimen requires an amendment to the dates of use, applicant must also verify the amended dates.  37 C.F.R. §2.71(c); TMEP §904.05.

 

Applicant may not withdraw the statement of use.  37 C.F.R. §2.88(g); TMEP §1109.17.

 

Options:

 

If applicant does not respond within six months of the mailing date of this final Office action, the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond to this final Office action by: 

 

(1)     Submitting a response that fully satisfies all outstanding requirements, if feasible; and/or

 

(2)     Filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class.

 

37 C.F.R. §§2.6(a)(18), 2.64(a); TBMP ch. 1200; TMEP §714.04.

 

In certain rare circumstances, a petition to the Director may be filed pursuant to 37 C.F.R. §2.63(b)(2) to review a final Office action that is limited to procedural issues.  37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters).  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

 

/Dominic Fathy/

Trademark Examining Attorney

Law Office 108

571-272-8801 (phone)

571-273-8801 (fax)

dominic.fathy@uspto.gov

 

 

RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the form at http://www.gov.uspto.report/teas/eTEASpageD.htm, waiting 48-72 hours if applicant received notification of the Office action via e-mail.  For technical assistance with the form, please e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned examining attorney.  Do not respond to this Office action by e-mail; the USPTO does not accept e-mailed responses.

 

If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response.  Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.

 

STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov.  When conducting an online status check, print and maintain a copy of the complete TARR screen.  If the status of your application has not changed for more than six months, please contact the assigned examining attorney.