Offc Action Outgoing

On 6/11/2007, the examining attorney issued an Office Action with a requirement for a new specimen, because the specimen of record did not show trademark use.

On 6/19/2007, the applicant submitted a substitute specimen.

The examining attorney has reviewed the substitute specimen and has determined that it still fails to function to show trademark usage. As such, the requirement for the substitute specimen is maintained and now made FINAL.

SPECIMENS OF RECORD FAIL TO FUNCTION

The specimen is not acceptable to show trademark use in a display associated with the goods because, although identified as a catalog page or webpage, it does not show the necessary ordering information. Trademark Act Section 45, 15 U.S.C. §1127; 37 C.F.R. §2.56(b)(1); TMEP §§904.06(a)-(b).

A website page that displays a product, and provides a means of ordering the product, can constitute a "display associated with the goods," as long as the mark appears on the web page in a manner in which the mark is associated with the goods, and the web page provides a means for ordering the goods. The Trademark Trial and Appeal Board has held that web pages that display goods and their trademarks and provide for online ordering of such goods are, in fact, electronic displays which are associated with the goods. Such uses are not merely advertising, because in addition to showing the goods, they provide a link for ordering the goods. In effect, the website is an electronic retail store, and the web page is a shelf-talker or banner which encourages the consumer to buy the product. A consumer using the link on the web page to purchase the goods is the equivalent of a consumer seeing a shelf-talker and taking the item to the cashier in a store to purchase it. The web page is thus a point of sale display by which an actual sale is made. In re Dell Inc., 71 USPQ2d 1725 (TTAB 2004). TMEP Section 904.06(b).

In the case at issue, the website page does not show the ability to purchase the product as there is no price, no ordering information. The specimen merely consists of a website with a link to a catalog page or other parties selling the goods.

In addition, while a picture of the goods does appear on the page, the mark actually on the goods is HOLLEY BLACK ELECTRIC FUEL PUMP. In fact, applicant has an application for the mark HOLLEY BLACK ELECTRIC FULE PUMP, which is further evidence that the “BLACK” as shown on the goods does not constitute proper usage of the mark BLACK for these goods, as it is part of the composite mark.

The mark BLACK by itself only appears in the specimen in the description: 140 GPH “BLACK” ELECTRIC FUEL PUMP, and in fact, may not even match the drawing, as the applied-for mark (BLACK) is integrated into the additional matter.

As such, the substitute specimen fails to function to show trademark usage and the requirement for a substitute specimen is now made FINAL.

Therefore, applicant must submit the following:

(1) A substitute specimen showing the mark in use in commerce for the goods specified in the application; and

(2) The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “The substitute specimen was in use in commerce at least as early as the filing date of the application.” 37 C.F.R. §2.59(a); TMEP §904.09. 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).

Examples of 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.

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 a 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 §806.03(c).

III. PROPER RESPONSE TO FINAL REFUSAL:

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 matter. The petition fee is $100. 37 C.F.R. §2.6(a)(15).

/Heather A. Sapp/

Trademark Examining Attorney

Law Office 108

571-272-8809 (voice)

571-273-8809 (fax)

Heather.Sapp@uspto.gov

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.