UNITED STATES PATENT AND TRADEMARK OFFICE
| SERIAL NO: 76/696492 MARK: QWIK WITTZ | |
| CORRESPONDENT ADDRESS: |
RESPOND TO THIS ACTION: http://www.uspto.gov/teas/eTEASpageD.htm GENERAL TRADEMARK INFORMATION: http://www.uspto.gov/main/trademarks.htm |
| APPLICANT: Sorensen, Joseph | |
| CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: | |
TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.
This action is in response to the applicant’s correspondence dated August 28, 2009. The applicant has amended the mark to the typed drawing “Qwik Wittz”. However, for the reasons below the amendment is unacceptable. The applicant also submitted their national citizenship. The requirement for the applicant’s national citizenship is thus satisfied. The requirement for a clear drawing is maintained and continued.
An amendment to a mark will not be accepted if the change would materially alter the mark in the initial application. 37 C.F.R. §2.72; In re Who? Vision Sys., Inc., 57 USPQ2d 1211 (TTAB 2000) (holding proposed amendment of TACILESENSE to TACTILESENSE to be material alteration); In re CTB Inc., 52 USPQ2d 1471 (TTAB 1999) (holding proposed amendment of TURBO and design to typed word TURBO to be material alteration); TMEP §807.14.
For example, if republication of the amended mark would be necessary in order to provide proper notice of the mark to third parties for opposition purposes, then the mark has been materially altered and the amendment is not permitted. In re Who? Vision Sys. Inc., 57 USPQ2d at 1218. “The modified mark must contain the essence of the original mark, and the new form must create the impression of being essentially the same mark.” Visa Int’l Serv. Ass’n v. Life Code Sys., Inc., 220 USPQ 740, 743 (TTAB 1983); see In re Nationwide Indus. Inc., 6 USPQ2d 1882, 1885 (TTAB 1988); TMEP §807.14.
The Office determines whether a proposed amendment materially alters a mark by comparing the proposed amended mark with the mark in the drawing filed with the original application. TMEP §807.14(c).
In the present case, the proposed amendment to the mark is refused because it would result in a material alteration of the mark depicted in the original application. TMEP §807.17; see 37 C.F.R. §2.72. Specifically, the proposed amendment would materially alter the mark in the initial application because it would result in a design mark with two letters becoming a typed mark containing two words.
Accordingly, the original drawing of the mark will remain operative.
As stated previously in the Office Action dated June 21, 2009, the applied-for mark is the design mark “QW”, the mark that appears on the separate drawing page of the application. In an application that shows two different marks, one in the body of the written application and one on a separate drawing page, the mark on the separate drawing page controls for purposes of determining what the mark is. In re L.G. Lavorazioni Grafite S.r.l., 61 USPQ2d 1063 (Dir USPTO 2001); TMEP §807.01.
RESPONDING TO AN OFFICE ACTION
There is no required format or form for responding to an Office action. The Office recommends applicants use the Trademark Electronic Application System (TEAS) to respond to Office actions online at http://www.uspto.gov/teas/index.html. If applicant responds on paper via regular mail, the response should include the title “Response to Office Action” and the following information: (1) the name and law office number of the examining attorney, (2) the serial number and filing date of the application, (3) the date of issuance of this Office action, (4) applicant’s name, address, telephone number and e-mail address (if applicable), and (5) the mark. 37 C.F.R. §2.194(b)(1); TMEP §302.03(a).
In the response, applicant should explicitly address each refusal and/or requirement raised in the Office action. If a refusal has issued, applicant may wish to argue against the refusal, i.e., submit arguments and/or evidence as to why the refusal should be withdrawn and why the mark should register. To respond to requirements, applicant should set forth in writing the required changes or statements.
The response must be signed by applicant or someone with legal authority to bind applicant (i.e., a corporate officer of a corporate applicant, the equivalent of an officer for unincorporated organizations or limited liability company applicants, a general partner of a partnership applicant, each applicant for applications with multiple individual applicants). TMEP §§605.02, 712. The signer must personally sign and date the response or manually enter their electronic signature in the signature block. TMEP §605.02.
/R.M.Herrera/
Roselle M. Herrera
Trademark Examining Attorney
Law Office 102
P: (571) 272-1909
F: (571) 273-1909
RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the form at http://www.uspto.gov/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.