Offc Action Outgoing

The following requirement for a change in the classification of the identification of goods was satisfied by the applicant providing an acceptable amendment. TMEP §714.04.

Color differs on drawing and foreign certificate

The drawing of the mark in the U.S. application is not acceptable because it does not correspond to the mark shown in the foreign registration. See 15 U.S.C. §1126(e); 37 C.F.R. §2.51(c); TMEP §§807.07(d)(ii), 1011.01. The drawing displays the mark in BLACK and WHITE; however, the foreign registration shows the mark in the colors BLUE, BLACK, and WHITE.

The drawing of the mark in a U.S. application must be a substantially exact representation of the mark that appears in the foreign registration. 37 C.F.R. §2.51(c); In re Hacot-Colombier, 105 F.3d 616, 618-19, 41 USPQ2d 1523, 1525 (Fed. Cir. 1997); TMEP §§807.12(b), 1011.01; see United Rum Merchs. Ltd. v. Distillers Corp. (S.A.), 9 USPQ2d 1481, 1483-84 (TTAB 1988). However, a mark in a U.S. application can be amended only if the change would not materially alter the mark. 37 C.F.R. §2.72(c); In re Wine Soc’y of Am. Inc., 12 USPQ2d 1139 (TTAB 1989); see TMEP §§807.14 et seq., 1011.03.

Therefore, applicant must do one of the following:

(1) Submit a new drawing that conforms to the mark in the foreign registration but does not materially alter the mark in the U.S. application. See TMEP §§807.07(d)(ii), 1011.03. Amending the drawing to agree with the foreign registration would not be considered a material alteration of the mark in this case. However, if applicant submits a new drawing, the color claim in the U.S. application and foreign registration must agree. TMEP §§807.07(d)(ii), 1011.01; see 37 C.F.R. §2.72(c).; or

(2) Amend the basis from Trademark Act Section 44 to Section 1(a) or Section 1(b), if applicant can satisfy the requirements for the chosen basis. See 15 U.S.C. §§1051(a)-(b), 1126(e); 37 C.F.R. §2.35(b)(1); TMEP §§806.03, 807.12(b). A foreign registration certificate is not required for a Section 1(a) or 1(b) basis. See 15 U.S.C. §1051(a)-(b); TMEP §806.01(a)-(b).

To amend the basis to Section 1(a) based on use in commerce, applicant must satisfy the following five requirements:

(1) Submit the following statement: “The mark is in use in commerce, as defined by 15 U.S.C. §1127, and was in use in such commerce on or in connection with the goods or services listed in the application as of the application filing date.”;

(2) Specify the date of first use of the mark anywhere on the goods or in connection with the services;

(3) Specify the date of first use of the mark in commerce as a trademark or service mark;

(4) Submit one “specimen” that shows the mark used on the goods, or in connection with the services, for each class of goods and/or services (i.e., showing how the applicant actually uses the mark in commerce). If the specimen was not filed with the application, applicant must submit the following statement: “The substitute specimen was in use in commerce at least as early as the application filing date.”; and

(5) Submit an affidavit or signed declaration under 37 C.F.R. §§2.20, 2.33, verifying the four preceding requirements.

See 15 U.S.C. §1051(a); 37 C.F.R. §§2.34(a)(1), 2.59(a); TMEP §806.01(a).

To amend the basis to Section 1(b) based on an intent to use the mark in commerce, applicant must provide a statement requesting replacement of the Section 44 basis with Section 1(b). TMEP §806.03(d).

Dotted line TO show position of mark required

Applicant must depict the mark in the drawing to include broken or dotted lines to show the position of the mark on the goods or container. Applicant must show the mark itself using solid lines. See 37 C.F.R. §2.52(b)(4); TMEP §§807.08, 1202.02(d).

The following legal authorities govern the processing of trademark and service mark applications by the Office: The Trademark Act, 15 U.S.C. §§1051 et seq., the Trademark Rules of Practice, 37 C.F.R. Part 2, and the Office’s Trademark Manual of Examining Procedure (TMEP) (4th ed., 2005), available on the United States Patent and Trademark Office web site at http://www.gov.uspto.report/main/trademarks.htm.

Applicant should include the following information on all correspondence with the Office: (1) the name and law office number of the trademark examining attorney; (2) the serial number of this application; (3) the mailing date of this Office action; and, (4) applicant's telephone number. 37 C.F.R. §2.194(b)(1); TMEP §302.03(a).

If the Applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

/Warren L. Olandria/

Trademark Attorney

Law Office 112

(571) 272-9718

warren.olandria@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.