UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/687050
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CORRESPONDENT ADDRESS: |
RESPOND TO THIS ACTION: http://www.gov.uspto.report/teas/eTEASpageD.htm
GENERAL TRADEMARK INFORMATION: http://www.gov.uspto.report/main/trademarks.htm
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APPLICANT: JONPAUL BOWS, INC.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.
THIS IS A FINAL ACTION.
This letter responds to the applicant’s communication filed on July 22, 2008. The applicant (1) argued against the failure to function as a trademark refusal, (2) submitted a disclaimer of THE PICTORIAL REPRESENTATION OF A BOW FOR PLAYING MUSICAL INSTRUMENTS, (3) submitted a color claim and color location statement,(4) submitted a concise description of the mark, and (5) argued that the specimen submitted with the original application should be accepted as an acceptable catalog for goods.
The trademark examining attorney has carefully considered the applicant’s arguments and the failure to function as a trademark refusal is now withdrawn. Furthermore, the following requirements have been satisfied: (1) Disclaimer (2) Color Drawing With No Color Claim and No Color Location Statement; (3) Concise Description of the Mark Needed . TMEP §§713.02, 714.04.
Requirement: Applicant Must Submit a Substitute Specimen or Amend the Filing Basis to Section 1(b) – Printed Catalog Not Acceptable for Goods
The examining attorney informed the applicant that the specimen was 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 mark in close proximity to a picture of the goods. Trademark Act Section 45, 15 U.S.C. §1127; 37 C.F.R. §2.56(b)(1); TMEP §§904.03(h)-(i).
A printed or web catalog, web page, or similar specimen is acceptable to show trademark use as a display associated with the goods only if it includes (1) a picture of the relevant goods, (2) the mark appearing sufficiently near the picture of the goods so as to associate the mark with the goods, and (3) information necessary to order the goods (e.g., sales form, price list, instructions for ordering, etc.) or a visible weblink to order the goods. Lands’ End, Inc. v. Manbeck, 797 F. Supp. 511, 514, 24 USPQ2d 1314, 1316 (E.D. Va. 1992); In re Dell Inc., 71 USPQ2d 1725, 1727-1729 (TTAB 2004); In re MediaShare Corp., 43 USPQ2d 1304 (TTAB 1997); TMEP §§904.03(h), (i).
The applicant argues that the specimen submitted with the application meets these three requirements. While the applicant is correct in stating that the catalog includes a picture of the relevant goods and ordering information on the last page of the catalog, the catalog does not include the mark appearing sufficiently near the picture of the goods. The applicant’s mark only appears on the front cover of the applicant’s catalog. Thus, it does not appear in close proximity to any of the goods pictured in the catalog because the first goods pictured in the catalog don’t appear until three pages into the catalog. If the mark is separated from the identified goods in the catalog by multiple pages, the mark can not be seen as being in close proximity to the goods.
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).
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 §904.05. 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).
Examples of specimens for goods are tags, labels, instruction manuals, containers, or photographs that show the mark on the goods or packaging. TMEP §§904.03 et seq.
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.
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(Signature)
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(Print or Type Name and Position)
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(Date)
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).
Since the applicant failed to provide an acceptable substitute specimen and failed to amend the filing basis to Section 1(b), this requirement is maintained and is now made FINAL.
(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).
If applicant has questions about its application, please telephone the assigned trademark examining attorney directly at the number below.
/Seth A. Rappaport/
Seth A. Rappaport
Trademark Examining Attorney
Law Office 103
Phone: (571) 270-1508
Fax: (571) 270-2508
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.