UNITED STATES PATENT AND TRADEMARK OFFICE
|
SERIAL NO: 76/651443
APPLICANT: GSE Lining Technology, Inc.
|
|
|
CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
|
|
MARK: PERMANET
|
|
|
CORRESPONDENT’S REFERENCE/DOCKET NO: GSE0450T0073
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.
|
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 76/651443
This letter responds to the applicant’s communication filed on November 20, 2006.
DATE OF FIRST USE IN COMMERCE IS INTERPRETED AS AFTER DATE OF FILING TMEP §903.07.
The earlier requirement regarding “DATES of USE”, was not complete. Applicant’s date of November 2005 as the date of first use in commerce must also precede the filing date.
Applicant has specified “November 2005” as the date of first use of the mark in commerce, which the Office interprets this as the last day of November, November 30, 2005. TMEP §903.07. This date is after November 28, 2005, the date on which the application was filed. For an application filed on the basis of use in commerce, an applicant must have used the mark in commerce at least as early as the filing date. Trademark Act Section 1(a)(2), 15 U.S.C. §1051(a)(2); 37 C.F.R. §2.34(a)(1); TMEP §§806.01(a) and 901.
If applicant used the mark in commerce on or before the filing date of the application, then applicant may correct the date of first use in commerce. Applicant must verify this corrected date of first use in commerce with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20. 37 C.F.R. §2.71(c); TMEP §903.05.
If applicant did not use the mark in commerce on or before the filing date, then applicant may substitute a different basis for filing, if applicant can meet the requirements for the new basis. TMEP §§806.01 et seq. and 806.03 et seq.
Applicant must submit (1) a substitute specimen showing the mark as it is used in commerce on the goods or on packaging for the goods, and (2) a statement that “the substitute specimen was in use in commerce at least as early as the filing date of the application,” verified with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20. 37 C.F.R. §§2.56 and 2.59(a); TMEP §904.09.
The current specimen of record comprises a “product data sheet” and is unacceptable as evidence of actual trademark use because it is merely informational material regarding the product, and does not show proper trademark use for the goods themselves, “flexible nonwoven geocomposite sheet material for use as a drainage medium”
Any material whose function is merely to tell the prospective purchaser about the goods, or to promote the sale of the goods, is unacceptable to support trademark use. Similarly, informational inserts are generally not acceptable to show trademark use. In re MediaShare Corp., 43 USPQ2d 1304 (TTAB 1997); In re Schiapparelli Searle, 26 USPQ2d 1520 (TTAB 1993); In re Drilco Industrial Inc., 15 USPQ2d 1671 (TTAB 1990); In re ITT Rayonier Inc., 208 USPQ 86 (TTAB 1980); In re Bright of America, Inc., 205 USPQ 63 (TTAB 1979). Merely because applicant states that this sheet is used in “direct soliciting of orders” does not overcome the refusal.
However, an instruction sheet may be an acceptable specimen. In re Ultraflight Inc., 221 USPQ 903 (TTAB 1984). See TMEP §904.07 regarding package inserts.
The following types of items are generally considered advertising, and unless they comprise point-of-sale material, are not acceptable as specimens of use on goods: advertising circulars and brochures; price lists; announcements; publicity releases; listings in trade directories; and business cards. See TMEP Section 904.05
Examples of acceptable specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the goods or packaging, or displays associated with the goods at their point of sale. TMEP §§904.04 et seq.
The following is a sample declaration under 37 C.F.R. §2.20 with a supporting statement for a substitute specimen:
The undersigned being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements and the like may jeopardize the validity of the application or document or any registration resulting there from, declares that the substitute specimen was in use in commerce at least as early as the filing date of the application; 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 & Position
_____________________________
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. TMEP §§904.11 and 1301.02 et seq.
Amending To Section 1(b).
If applicant cannot satisfy the above requirements, applicant may amend the Section 1(a) filing basis (use in commerce) to Section 1(b) (intent to use basis), for which no specimen is required. However, should applicant amend the basis to Section 1(b), registration cannot be granted until applicant later amends the application back to use in commerce by filing an acceptable allegation of use with a proper specimen. 15 U.S.C. §1051(c); 37 C.F.R. §§2.76, 2.88; TMEP Chapter 1100.
In order to amend to Section 1(b), applicant must submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “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.” 15 U.S.C. §1051(b); 37 C.F.R. §§2.34(a)(2) and 2.35(b)(1); TMEP §806.01(b).
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 & Position
_____________________________
Date
Entity 37 C.F.R. §2.32(a)(3)(ii); TMEP §§803.03(c) and 803.04.
The record now reflects that applicant is a corporation of Delaware
Drawing Page 37 C.F.R. §2.52(a). TMEP §807.03(a).
The following statement has now been added to the record:
/Linda E. Blohm/ Trademark Examining Attorney
571.272.9129, Law Office 110
Facsimile 571.273.9110
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.