Offc Action Outgoing

This letter responds to applicant’s communication filed on June 25, 2007. In this communication, applicant (1) submitted an amended identification of goods; (2) submitted a substitute specimen of use and supporting declaration.

The amended identification of goods is accepted. However, For the reasons set forth below, the refusal is now made FINAL under Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051, 1052 and 1127, for failure to function as a trademark as used on the specimen(s) of record. 37 C.F.R. §2.64(a).

Mark Does Not Function as a Trademark: Improper Specimen of Use

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.

According to applicant’s description, the current specimen of record comprises a brochure shipped with applicant’s goods. The specimen is unacceptable as evidence of actual mark use because the it does not show the mark used in connection with applicant’s goods. While the brochure shows the mark, it is not clear that the mark is used to identify the source of the goods. For example, AEROTECH, according to this specimen of use, could be the name of a retail or wholesale store that features drilling attachments.

Examples of acceptable specimens for goods are tags, labels, instruction manuals, containers, or photographs that show the mark on the goods or packaging. TMEP §§904.04 et seq.

Pending an adequate response to the above, registration is refused because the specimens of record do not show use of the proposed mark as a trademark. Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§1051, 1052, and 1127; TMEP §§904.11 and 1301.02 et seq.

This refusal will be withdrawn if applicant submits (1) a substitute specimen for each class showing proper trademark and service mark use of the proposed mark in connection with the applicant’s goods and services, 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. §2.59(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, then applicant must verify the amendment with a notarized affidavit or a signed declaration in accordance with 37 C.F.R. §2.20. 37 C.F.R. §2.71(c).

Sample Declaration for Substitute Specimen

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 and Position)

_____________________________

(Date)

Option – Amendment to Basis

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. Please note that applicant may not assert both use in commerce and intent to use for the same goods or services. 37 C.F.R. §2.34(b)(1); TMEP §806.02(b).

In this case, applicant may wish to delete its Section 1(a) basis and assert a Section 1(b) basis based on an intent to use the mark in commerce.

If the applicant amends its basis to Section 1(b), applicant must attest 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. This statement must be dated and signed by a person authorized to sign under 37 C.F.R. §2.33(a), and verified with a notarized affidavit or signed declaration under 37 C.F.R. §2.20. 15 U.S.C. §1051(b)(3)(B); 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.

To satisfy this requirement, applicant may add the following declaration paragraph at the end of its response, properly signed and dated:

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 and the like 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; that the facts set forth in the application are true and correct; 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.

_____________________________

(Signature)

_____________________________

(Print or Type Name and Position)

_____________________________

(Date)

Response to FINAL Action

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).

/kristindahling/

Kristin M. Dahling

Trademark Attorney, Law Office 113

U.S. Patent and Trademark Office

(571) 272-8277

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 Office’s Response to Office action 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.