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 Office action is in response to applicant’s communication filed on 08/29/2008.

 

Applicant has provided a new color description of the mark.

 

This is acceptable in part.   When applicant and examining attorney spoke, the examining attorney indicated that applicant could submit a new drawing and new color description.  Applicant has not provided the new drawing that matches the color description.

 

The previous refusal as to the specimen is withdrawn.

 

DRAWING

 

Applicant must provide a new drawing page which agrees with the description and color description of the mark.

 

The mark on the specimen disagrees with the mark on the drawing.  In this case, the specimen displays the mark as TIGER TRUCKAT with a tiger design and the wording TRUCKAT in bold letters in black and gold below the wording TIGER and design, while the drawing shows the mark as TIGER TRUCKAT with a tiger design and the wording TRUCKAT in small black letters to the right of the TIGER and design...

 

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).

 

Therefore, applicant must submit one of the following:

 

(1)     A new drawing of the mark that agrees with the mark on the specimen but does not materially alter the original mark  See 37 C.F.R. §2.72(b); TMEP §§807.13(a), 807.14 et seq.; or

 

(2)     A substitute specimen showing use in commerce of the mark on the drawing, and 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 §§807.12(a), 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.

 

The drawing shows the mark in colors that differ from those specified in the color claim and/or color location statement.  Specifically, the drawing shows the mark as the tiger in yellow, the wording TIGER in red, and the wording TRUCKAT in black to the right; however  the color location statement specifies the color red in the wording "TIGER" and in the mouth of the leaping tiger in the design; color gold appears in the body of the leaping tiger in the design and in the wording "KAT"; color black appears in the outline and stripes of the tiger, in the wording "TRUCK" and in the outline of the wording "TIGER" and "KAT".

 

 

Therefore, applicant must submit either (1) a corrected color claim and/or location statement that agree(s) with the color(s) depicted in the drawing of the mark, or (2) a color drawing that agrees with the color claim and location statement.  TMEP §807.07(c).

 

If applicant submits a substitute drawing, applicant is advised that any additional amendments to the applied-for mark will not be accepted if the changes would materially alter the mark.  37 C.F.R. §2.72; see TMEP §§807.07(c), 807.14 et seq.

 

 

If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney.

 

 

 

 

 

 

/Anne T. Madden/

Trademark Examining Attorney

Law Office 103

571-272-9190

fax 571-273-9103

 

 

 

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.