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 letter responds to the applicant’s communication filed on August 24, 2007.

 

The specimen does not show use of the mark for any goods identified in the statement of use.  The applicant must submit a specimen showing use of the mark for the goods specified.  This requirement is repeated and made FINAL. 37 C.F.R. §§2.56 and 2.88(b)(2); TMEP §1109.09(b).  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 expiration of the time allowed to the applicant for filing a statement of use.  37 C.F.R. §2.59(b); TMEP §904.09.  The specimens show use of the mark in relation to a quarterly magazine; however, applicant has sought to register its mark for “books about religion and Bible study, religious workbooks.”  Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, the applicant may not amend to include any goods that are not within the scope of goods set forth in the present identification.

 

Applicant states that its magazines are “new editions of books introduced quarterly” and claims that it introduced a full copy of one of the products displaying the mark.  To be sure, applicant has not submitted a “full copy of one of the products displaying the mark.”  Applicant has submitted excerpted pages from several of the quarterly magazines. A table of contents listing in applicant’s magazine indicates that a full copy of one of applicant’s magazines is at least 58 pages.  Applicant is welcomed to introduce such in the record if it feels it will advance its argument.

 

The proposed mark COLLEGIATE appears as the title of the magazine for young adults.  A search of applicant’s website revealed applicant’s magazine to be precisely that.  Applicant’s website identified COLLEGIATE as a quarterly magazines sold under the section of “magazines,” and with the informative slogan: OUR MAGAZINE SUBSCRIPTIONS MAKE CHRISTMAS A PIECE OF CAKE.  See attachments.

 

The definition of magazine is “a periodical containing a collection of articles, stories, pictures and other features.” (See American Heritage Dictionary attachment).  The definition describes the exact nature of applicant’s goods.

 

The dictionary definition and the manner of promotion of applicant’s product indicate that applicant’s product is a magazine.  Moreover, the content of the specimens with advertising and a table of contents indicating sections, show a look and feel of a magazine.

 

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 and 1109.09(a).

 

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 prior to the expiration of the time allowed applicant for filing a statement of use; 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 and Position)

 _____________________________

(Date)

 

If applicant fails to respond to this final action within six months of the mailing date, the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond to this final action by: 

 

(1)   submitting a response that fully satisfies all outstanding requirements, if feasible (37 C.F.R. §2.64(a)); 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) and 2.64(a); TMEP §§715.01 and 1501 et seq.; TBMP Chapter 1200).

 

In certain circumstances, a petition to the Director may be filed to review a final action that is limited to procedural issues, pursuant to 37 C.F.R. §2.63(b)(2).  37 C.F.R. §2.64(a).  See 37 C.F.R. §2.146(b), TMEP §1704, and TBMP Chapter 1201.05 for an explanation of petitionable matters.  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

/RaulCordova/

 

 

RESPOND TO THIS ACTION: If there are any questions about the Office action, please contact the assigned examining attorney. A response to this Office action should be filed using the form available at http://www.gov.uspto.report/teas/eTEASpageD.htm. If notification of this Office action was received via e-mail, no response using this form may be filed for 72 hours after receipt of the notification. Do not attempt to respond by e-mail as 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.