Offc Action Outgoing

This letter responds to applicant’s communication filed on 1/28/08. The examining attorney acknowledges and has entered into the record the substitute specimen. However the submitted specimen does not depict the mark in color and therefore raises a new issue because it does not match the drawing of record. Furthermore the substitute specimen was not properly verified.

DRAWING DOES NOT MATCH SPECIMEN

The mark depicted on the drawing disagrees with the mark on the specimen. In this case, the drawing shows the mark in the color(s) blue and black. However, the substitute specimen submitted does not show the mark in color.

The mark shown 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(a); see C.F.R. §2.72(a)(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. If the new drawing is in color, applicant must also provide a written list of the colors that are claimed as a feature of the mark and a description of where the colors appear in the mark – both of which must agree with the colors in the new drawing. 37 C.F.R. §2.72(a); TMEP §§807.14 et seq.; If the applicant submits a new drawing in black and white without claiming color, the color claim and color description statements should then be deleted; or

(2) A substitute specimen that shows use of the mark that appears on the drawing, and the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “The 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 §904.05. If submitting a substitute specimen requires an amendment to the dates of use, applicant must also verify the amended dates. 37 C.F.R. §2.71(c).

If applicant cannot satisfy one of 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 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), 2.35(b)(1); TMEP §806.01(b).

SPECIMEN VERIFICATION

The applicant did make the requisite statement regarding the substitute specimen, but the statement was not properly verified by either an affidavit or declaration pursuant to 37 C.F.R. Section 2.20. Pending a proper response, registration is refused because the specimen does not show the applied-for mark in use in commerce as a trademark. 15 U.S.C. §§1051 and 1127; 37 C.F.R. §§2.56 and 2.88.

As previously stated, applicant must submit a statement that “the substitute specimen was in use in commerce at least as early as the filing date of the application,” verified with an affidavit or signed declaration under 37 C.F.R. §2.20. 37 C.F.R. §2.59(a); TMEP §904.05

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)

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

/Karen K. Bush/

Trademark Examining Attorney

Law Office 105

571-272-9136

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.