Offc Action Outgoing

This letter responds to applicant’s communication filed on July 7, 2008 in connection with applicant’s petition to revive. Applicant’s petition to revive has been granted. In addition, the applicant 1) argued against the refusal to register the mark under Trademark Act Section 2(d) 2) amended the identification of goods and 3) provided a substitute specimen along with a proper statement and declaration. Numbers 1, 2 and 3 are not accepted.

Thus, the refusal to register the mark under Section 2(d) of the Trademark Act and the requirements for an amended classification and identification of goods and substitute specimen are continued and made FINAL.

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION – PARTIAL

THIS REFUSAL APPLIES ONLY TO THE GOODS SPECIFIED THEREIN, NAMELY, WITH RESPECT TO U.S. REGISTRATION NO. 2535835 COFFEE, TEA, BREAKFAST CEREALS, GELATO, PROCESSED CEREALS AND WITH RESPECT TO U.S. REGISTRATION NO. 3300871 SOUPS, SNACKS IN THE NATURE OF CEREAL BASED SNACK FOODS, SNACK CAKES, GELATO, AND SALADS

For the reasons set forth below, the refusal under Trademark Act Section 2(d) is now made FINAL with respect to U.S. Registration No(s). 2535835 and 3300871. See 15 U.S.C. §1052(d); 37 C.F.R. §2.64(a).

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 2535835 and 330871. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the enclosed registrations.

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely that a potential consumer would be confused or mistaken or deceived as to the source of the goods and/or services of the applicant and registrant. See 15 U.S.C. §1052(d). The court in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) listed the principal factors to be considered when determining whether there is a likelihood of confusion under Section 2(d). See TMEP §1207.01. However, not all of the factors are necessarily relevant or of equal weight, and any one factor may be dominant in a given case, depending upon the evidence of record. In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont, 476 F.2d at 1361-62, 177 USPQ at 567.

In this case, the following factors are the most relevant: similarity of the marks, similarity of the goods and/or services, and similarity of trade channels of the goods and/or services. See In re Opus One, Inc., 60 USPQ2d 1812 (TTAB 2001); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593 (TTAB 1999); In re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999); TMEP §§1207.01 et seq.

COMPARISON OF THE MARKS

In a likelihood of confusion determination, the marks are compared for similarities in their appearance, sound, meaning or connotation and commercial impression. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b). Similarity in any one of these elements may be sufficient to find a likelihood of confusion. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1043 (TTAB 1987); see TMEP §1207.01(b).

Applicant’s mark is standard character mark for ON THE FLY. The mark in U.S. Registration No. 2535835 is MILK ON THE FLY! stylized and design. The mark in U.S. Registration No. 3300871 is the standard character mark SNACKS ON THE FLY. Applicant’s mark is similar in sound and meaning or connotation and commercial impression with the registered marks because all the marks use the wording ON THE FLY. The registered marks merely use a generic term with the goods in connection with the wording ON THE FLY. Thus, the ON THE FLY portion of the marks is greater in creating a similar commercial impression among the marks.

With respect to 2535835 the milk portion of the wording in the mark as displayed is clearly separate from the wording ON THE FLY which further enhances the similarity in commercial impression betweens the mark based on the similar word portions ON THE FLY.

With respect to U.S. Registration No. 2535835, the applicant argues that the visual commercial impression related to the design element in this mark obviates the likelihood of confusion between the marks as applicant’s mark contains no design elements. The examining attorney finds this line of reasoning unpersuasive. When a mark consists of a word portion and a design portion, the word portion is more likely to be impressed upon a purchaser’s memory and to be used in calling for the goods and/or services. Therefore, the word portion is normally accorded greater weight in determining likelihood of confusion. In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999); In re Appetito Provisions Co., 3 USPQ2d 1553, 1554 (TTAB 1987); Amoco Oil Co. v. Amerco, Inc., 192 USPQ 729, 735 (TTAB 1976); TMEP §1207.01(c)(ii). Thus, in the present case the similar word portions between the marks, namely, ON THE FLY, is more likely to be impressed upon the purchaser’s memory and to be used in calling for the goods. Therefore, although the mark in U.S. Registration No. 2535835 has a design element, the marks are similar in commercial impression and likely to cause confusion based on the common use of the wording ON THE FLY.

In addition, the applicant argues that the mark is not famous. However, the fact that the marks are not famous does not obviate the likelihood of confusion because the marks are similar in commercial impression.

With respect to U.S. Registration No. 3300871, the examining attorney notes that the applicant does not provide arguments with respect to the first Dupont factor, namely, the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.

COMPARISON OF THE GOODS

If the goods and/or services of the respective parties are “similar in kind and/or closely related,” the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as would be required with diverse goods and/or services. In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); see Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1242, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004); TMEP §1207.01(b).

U.S. REGISTRATION NO. 238535

Applicant’s goods to which this refusal applies with respect to U.S. Registration No. 235835 are: COFFEE, TEA, GELATO, BREAKFAST CEREALS, AND PROCESSED CEREALS.

The goods in U.S. Registration No. 235835 are fluid milk.

Applicants goods are similar in kind or closely related to registrant’s goods because the goods are beverages, namely, coffee, tea and milk. In addition, the goods are complimentary because milk is used in coffee and tea. Moreover, the goods milk, coffee and tea have been found to be related goods. See White House Milk Products Co. (White House Milk Co., Inc., assignee, substituted) v. Dwinell-Wright Company, 45 USPQ 444 (C.C.P.A. 1940) affirming a petition of cancellation in which similar marks for “White House” were used in connection with canned, unsweetened, evaporated milk and for coffee and tea and; The Borden Company v. Manhattan Coffee Company, 124 USPQ 430 (TTAB 1960) sustaining opposition and refusing registration to applicant in an opposition in which applicant’s mark for “STAR” for coffee was found to be confusing similar to opposers marks “STAR BRAND CONDENSED MILK” and a representation of a star, and a composite mark comprising “STAR” superimposed upon radiating rays from a five-pointed star both condensed milk.

As noted in The Borden Company v. Manhattan Coffee Company, 124 USPQ 431:

Condensed milk and coffee are grocery items of the character ordinarily sold in the same stores to the same class of purchasers and, as is well known, condensed milk may be used in place of sugar and cream in coffee. Under the circumstances, the relationship between these goods is such that, if sold under the same or similar marks, the purchasing public would be likely to assume that they originate with a single producer or seller.

As registrant’s mark is fluid milk, the same reasoning would apply here as fluid milk is broad enough to include condensed milk and other types of milk. Furthermore, this rational regarding the related nature of the good is equally applicable to this case even in light of applicant’s restrictions of channels of trade to restaurants and vending carts.

Furthermore, while not all food products are related per se, registrant’s milk is a complimentary food item used contemporaneously with applicant’s breakfast cereals and processed cereals. The contemporaneous use of similar marks on complementary food products is likely to cause confusion or mistake as to source. In re Martin's Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984) (likelihood of confusion between MARTIN'S for bread and MARTIN'S for cheese); In re Vienna Sausage Manufacturing Co., 230 USPQ 799 (TTAB 1986) (likelihood of confusion between SALZBURG for sausage and SALZBERG for cheese); In re Pierce Foods Corp., 230 USPQ 307 (TTAB 1986) (likelihood of confusion between CHIK'N BAKE and design for frozen pre-cooked chicken and CHICKEN BAKE for seasoned coating mix for chicken); In re Colonial Stores, Inc., 216 USPQ 793 (TTAB 1982) (likelihood of confusion between COUNTRY PRIDE for bread and COUNTRY PRIDE for prepared meat products); In re Carnation Co., 196 USPQ 716 (TTAB 1977) (likelihood of confusion between HAMBURGER PARTNER for noodles, pasta or rice with sauce mix and POTATO PARTNER for non-dairy dressing mix for use as a topping on desserts, salads and potatoes).

Gelato is ice cream. See attached definition from the Merriam-Webster OnLine Dictionary. Applicant’s gelato is a related food product or similar in kind to milk because both are dairy products which consumers would likely believe emanate from the same source. In addition, milk is an ingredient in ice cream. Thus, the goods are related because one is an ingredient in the other. See e.g. General Foods v. Kinslow, 59 USPQ 28 (TTAB 1943)(flour and bread are likely to cause confusion because one is an ingredient in the other); Kraft, Inc. v. Country Club Food Industries, Inc., 230 USPQ 549 ( TTAB 1986) (cream cheese and cheesecake are likely to cause confusion because one is an ingredient in the other).

Moreover, the goods milk and ice cream have been found to be related goods. See The Borden Comapny v. Gundlach, 82 USPQ 77 (Comm'r Pat. 1949) where applicant’s mark “Mel O Rich” was found to be confusingly similar to opposers mark MELOROL and where the goods fresh homogenized milk were found to have the same descriptive properties as ice cream and were found to be virtually identical for all purposes even if such milk is so processed that it is not suitable for use in making ice cream; and In re American Dairy Queen Corporation, 160 USPQ 211 (TTAB 1968) where use of identical marks on ice cream and on fresh milk was found likely to cause confusion.

U.S. REGISTRATION NO. 3300871

The goods in U.S. Registration No. 3300871 are processed nuts, candied nuts, dried fruits, snack mixes consisting of processed nuts and dried fruits, candy, snack mixes consisting primarily of crackers, pretzels and candied nuts, pretzels, sesame sticks and crackers.

Applicant’s goods to which this refusal applies with respect to U.S. Registration No. 3300871 are: SOUPS, SNACKS IN THE NATURE OF CEREAL BASED SNACK FOODS, SNACK CAKES, GELATO, AND SALADS.

While not all food products are related per se, registrant’s crackers are a complimentary food item used contemporaneously with applicant’s soups and salads. It is not uncommon for crackers to be served in connection with soups and salads. The contemporaneous use of similar marks on complementary food products is likely to cause confusion or mistake as to source. In re Martin's Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984) (likelihood of confusion between MARTIN'S for bread and MARTIN'S for cheese); In re Vienna Sausage Manufacturing Co., 230 USPQ 799 (TTAB 1986) (likelihood of confusion between SALZBURG for sausage and SALZBERG for cheese); In re Pierce Foods Corp., 230 USPQ 307 (TTAB 1986) (likelihood of confusion between CHIK'N BAKE and design for frozen pre-cooked chicken and CHICKEN BAKE for seasoned coating mix for chicken); In re Colonial Stores, Inc., 216 USPQ 793 (TTAB 1982) (likelihood of confusion between COUNTRY PRIDE for bread and COUNTRY PRIDE for prepared meat products); In re Carnation Co., 196 USPQ 716 (TTAB 1977) (likelihood of confusion between HAMBURGER PARTNER for noodles, pasta or rice with sauce mix and POTATO PARTNER for non-dairy dressing mix for use as a topping on desserts, salads and potatoes).

Applicant’s snacks in the nature of cereal based snack foods, snack cakes and gelato are related food items with respect to registrant’s goods because all the items are snack foods. In addition, applicant’s goods cereal based snack floods are broad enough to include the more specific items in the registrant’s identification of goods, namely, pretzels, sesame stick and crackers which are also cereal based.

Moreover, applicant’s goods gelato often contain registrant’s goods, namely, nuts and candy. Thus, the goods are related because one is an ingredient in the other. See e.g. General Foods v. Kinslow, 59 USPQ 28 (TTAB 1943)(flour and bread are likely to cause confusion because one is an ingredient in the other); Kraft, Inc. v. Country Club Food Industries, Inc., 230 USPQ 549 ( TTAB 1986) (cream cheese and cheesecake are likely to cause confusion because one is an ingredient in the other).

CHANNELS OF TRADE

Applicant argues that applicant’s goods are sold in smarkafes and smartkarts throughout the Washington, DC area. According to the applicant, the goods associated with the mark in U.S. Registration No. 2535835 are sold only in the Minneapolis-St. Paul area. In addition, according to the applicant, the goods associated with the mark in U.S. Registration No. 3300871 are not sold in the Washington D.C. area. Moreover, according to the applicant, the closest a potential customers would be a distributor in Upper Marlboaro, Maryland for wholesale delivery. Thus, according to the applicant there is no overlap in the trade channels between the two marks. The examining attorney finds this argument unpersuasive.

The presumption under Trademark Act Section 7(b), 15 U.S.C. §1057(b), is that the registrant is the owner of the mark and that use of the mark extends to all goods and/or services identified in the registration. The presumption also implies that the registrant operates in all normal channels of trade and reaches all classes of purchasers of the identified goods and/or services. In re Melville Corp., 18 USPQ2d 1386, 1389 (TTAB 1991); McDonald’s Corp. v. McKinley, 13 USPQ2d 1895, 1899 (TTAB 1989); RE/MAX of Am., Inc. v. Realty Mart, Inc., 207 USPQ 960, 964-65 (TTAB 1980); see TMEP §1207.01(a)(iii). The nature of the channels of trade are not limited in the cited registrations or applicant’s identification. Thus, the limited channels of trade to which applicant argues apply are not apparent in the nature of identification of goods in the cited registrations. The presumption is that the registrant’s goods operate in all normal channels of trade and reach all classes of purchasers of the identified goods. Thus, as written the channels of trade for applicant and those in the cited registrations are presumptively identical as the cited registrations do not contain any limitations on the channels of trade.

Furthermore, applicant essentially argues that its activities are geographically separate from those of registrant; however, applicant seeks a geographically unrestricted registration. The owner of a registration without specified limitations enjoys a presumption of exclusive right to nationwide use of the registered mark under Trademark Act Section 7(b), 15 U.S.C. §1057(b), regardless of its actual extent of use. Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1568, 218 USPQ 390, 393 (Fed. Cir. 1983). Therefore, the geographical extent of applicant’s and registrant’s activities is not relevant to a likelihood of confusion determination.

ACTUAL CONFUSION

Applicant argues that fact that the length of time during and the conditions under which there has been concurrent use without evidence of actual confusion supports a finding of no likelihood of confusion. The examining attorney finds this argument unpersuasive. The test under Trademark Act Section 2(d) is whether there is a likelihood of confusion. It is unnecessary to show actual confusion in establishing likelihood of confusion. TMEP §1207.01(d)(ii); e.g., Weiss Assocs. Inc. v. HRL Assocs. Inc., 902 F.2d 1546, 1549, 14 USPQ2d 1840, 1842-43 (Fed. Cir. 1990). The Trademark Trial and Appeal Board stated as follows:

[A]pplicant’s assertion that it is unaware of any actual confusion occurring as a result of the contemporaneous use of the marks of applicant and registrant is of little probative value in an ex parte proceeding such as this where we have no evidence pertaining to the nature and extent of the use by applicant and registrant (and thus cannot ascertain whether there has been ample opportunity for confusion to arise, if it were going to); and the registrant has no chance to be heard from (at least in the absence of a consent agreement, which applicant has not submitted in this case).

In re Kangaroos U.S.A., 223 USPQ 1025, 1026-27 (TTAB 1984).

In addition, the examining attorney has considered what the applicant has submitted with respect to the thirteen Dupont factors for each cited registration and finds none of them persuasive on the issue of likelihood of confusion. In general, not all the factors are relevant in this case. Moreover, when the marks and identification of goods as written are compared, there is a likelihood of confusion between the marks because the marks are similar in commercial impression and because the goods are related or similar in kind.

Couple the similarity in commercial impression along with the related nature of the goods and a consumer encountering the marks may wrongly assume that the goods are derived from a common commercial source.

Any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant. In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1025 (Fed. Cir. 1988). TMEP §1207.01(d)(i).

Thus, for the foregoing reasons, the refusal to register the mark under Section 2(d) of the Trademark Act is continued and made FINAL.

CLASSIFICATION AND IDENTIFICATION OF GOODS

The requirement for an amended classification and identification of goods is now made FINAL. See 37 C.F.R. §2.64(a).

Applicant classified the goods and/or services “SOUPS” in International Class 30; however, the correct classification is International Class 29. Applicant must either delete these goods and/or services or add International Class 29 to the application. 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.04(b).

The wording “salads” in the identification of goods is indefinite and must be clarified because the wording does not indicate the nature of the salad with enough specificity for proper identification and classification. See TMEP §1402.01. The wording is broad enough to includes types of salads classified in multiple classes. Applicant must list the goods and/or services by international class with the classes listed in ascending numerical order. TMEP §1403.01. Overall, applicant must amend the identification to specify the common commercial name of the goods. If there is no common commercial name, applicant must describe the product and its intended uses. See id.

For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.

Applicant may adopt the following identification of goods, if accurate:

Food products for sale and for consumption in restaurants and vending carts, namely, soups; prepared foods, namely, fruit salads, vegetable salads and soups; packaged foods, namely, fruit salads, vegetable salads and soups, International Class 29; and/or

Food products for sale and for consumption in restaurants and vending carts, namely, pizza, coffee, tea, crepes, breakfast foods in the nature of breakfast cereals, bagels, snacks in the nature of cereal based snack foods and snack cakes, gelato, pastries, processed cereals, natural foods and food products in the nature of natural brown sugar, prepared foods, namely, macaroni salads, pasta salads, rice salads, rice pilaf, sandwiches, tacos, and panini; packaged foods, namely, macaroni salads, pasta salads, rice salads, rice pilaf sandwiches tacos and panini, International Class 30.

Although identifications of goods may be amended to clarify or limit the goods, adding to or broadening the scope of the goods is not permitted. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07. Therefore, applicant may not amend the identification to include goods that are not within the scope of the goods set forth in the present identification.

If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the requirements below for those goods and/or services based on actual use in commerce under Trademark Act Section 1(a):

(1) Applicant must list the goods/services by international class;

(2) Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid (current fee information should be confirmed at http://www.uspto.gov); and

(3) For each additional international class of goods and/or services, applicant must submit:

a. Dates of first use of the mark anywhere and dates of first use of the mark in commerce, or a statement that the dates of use in the initial application apply to that class; and the dates of use, both anywhere and in commerce, must be at least as early as the filing date of the application;

b. One specimen showing use of the mark for each class of goods and/or services; and the specimen must have been in use in commerce at least as early as the filing date of the application. If a single specimen supports multiple classes, applicant should indicate which classes the specimen supports rather than providing multiple copies of the same specimen;

c. A statement that “the specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application;” and

d. Verification of the statements in 3(a) and 3(c) (above) in an affidavit or a signed declaration under 37 C.F.R. §§2.20, 2.33. Verification is not required where (1) the dates of use for the added class are stated to be the same as the dates of use specified in the initial application, and (2) the original specimens are acceptable for the added class(es).

See 37 C.F.R. §§2.34(a)(1), 2.71(c), 2.86(a); TMEP §§1403.01, 1403.02(c).

The specimen(s) of record is not acceptable for any of the International Classes. Applicant has paid for only one class. The filing fee for adding classes to an application is as follows:

(1) $325 per class, when the fees are submitted with a response filed online via the Trademark Electronic Application System (TEAS) at http://www.gov.uspto.report/teas/index.html; or

(2) $375 per class, when the fees are submitted with a paper response.

37 C.F.R. §2.6(a)(1)(i)-(a)(1)(ii); TMEP §810.

Thus, for the foregoing reasons, the requirement for an amended classification and identification of goods is now made FINAL. See 37 C.F.R. §2.64(a).

SPECIMEN UNACCEPTABLE

The requirement for a substitute specimen is now made FINAL. See 37 C.F.R. §2.64(a).

The specimen is not acceptable because it does not show the applied-for mark in use in commerce. An application based on Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each class of goods. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56; TMEP §§904, 904.07(a).

The specimen is not acceptable as evidence of actual trademark use because the specimen shows use of the mark on the smartkart. The use of the mark on the smarkart does not show use of the mark for the actual goods. While the goods are visible in the picture, the picture does not show the applied-for mark visibly on the packaging for the goods. Thus, the specimen fails to show proper use on the goods or on packaging of the goods.

Examples of specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the goods or packaging, or displays associated with the goods at their point of sale. TMEP §§904.03 et seq.

Therefore, applicant must submit the following:

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

(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 §904.05. 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).

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), 2.35(b)(1); TMEP §806.03(c).

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, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56; TMEP §§904, 904.07(a).

Thus, for the for the foregoing reasons, the requirement for a substitute specimen is now made FINAL. See 37 C.F.R. §2.64(a).

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)

DECLARATION FOR AMENDING TO A SECTION 1(B) BASIS

As stated above, if applicant cannot satisfy the specimen requirement and would like to amend the application filing basis to Section 1(b) intent to use, the following is a properly worded declaration:

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. 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 document or any resulting registration, declares that the facts set forth in this application are true; 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 THIS ACTION

If applicant does not respond within six months of the mailing date of this final Office action, the application will be abandoned. 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a). Applicant may respond to this final Office action by:

(1) Submitting a response that fully satisfies all outstanding requirements, if feasible; 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), 2.64(a); TBMP ch. 1200; TMEP §714.04.

In certain rare circumstances, a petition to the Director may be filed pursuant to 37 C.F.R. §2.63(b)(2) to review a final Office action that is limited to procedural issues. 37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters). The petition fee is $100. 37 C.F.R. §2.6(a)(15).

/Brendan D. McCauley/

Brendan D. McCauley

Examining Attorney

Law Office 114

571-272-9459

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.

Offc Action Outgoing

ON THE FLY

Home Slice, LLC

Offc Action Outgoing

OFFICE ACTION

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Offc Action Outgoing [image/jpeg]