Offc Action Outgoing

This Office action is in response to applicant’s communication filed on October 1, 2009. The amendments contained in the above-referenced response, with the exceptions cited below, are accepted and entered into the record.

REFUSAL – MORE THAN ONE MARK

Please note that the applicant submitted Exhibits A and B with a standard character mark and a special form mark. Registration is refused because applicant seeks registration of more than one mark. See 15 U.S.C. §§1051(a)(1), 1127; 37 C.F.R. §2.52; TMEP §807.01. An applicant may apply for only one mark in a single application. 37 C.F.R. §2.52; TMEP §807.01; see 15 U.S.C. §1051(a)(1); In re Int'l Flavors & Fragrances Inc., 183 F.3d 1361, 1366, 51 USPQ2d 1513, 1516 (Fed. Cir. 1999); In re Hayes, 62 USPQ2d 1443, 1445-46 (TTAB 2002).

Applicant may respond to this refusal by satisfying one the following:

(1) Submit a new drawing of the mark that shows one mark and is not a material alteration of the original mark. TMEP §807.01; see 37 C.F.R. §2.72(a); TMEP §§807.13(a), 807.14 et seq.; or

(2) Submit a substitute specimen showing the applied-for mark in use in commerce as one mark for each class of goods and/or services, and the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §§2.20, 2.33: “The substitute specimen was in use in commerce at least as early as the filing date of the application.” See 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); TMEP §904.05.

If applicant cannot satisfy one of the above requirements, applicant may amend the application from a use in commerce basis under Trademark Act Section 1(a) to an intent to use basis under Section 1(b), and the refusal will be withdrawn. See TMEP §806.03(c). However, if applicant amends the basis to Section 1(b), registration will not be granted until applicant later amends the application back to use in commerce by filing an acceptable allegation of use with a proper specimen showing one mark. See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103.

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, 2.33: “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.” 37 C.F.R. §2.34(a)(2); TMEP §806.01(b); see 15 U.S.C. §1051(b); 37 C.F.R. §2.35(b)(1).

Please note that the special form drawing was the original drawing submitted. The applicant may not amend to a standard character mark as it would be a material alteration to the mark.

APPLICANT MAY RESPOND

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

INFORMALITIES

If the applicant chooses to respond to the refusal to register, the applicant must respond to the requirement(s) set forth below.

Please note that the following issues are being raised in this letter in order to address every problem with the application. However, this does not obviate the original determination of non-registrability by the examining attorney. Applicant must still respond to the refusal by submitting arguments in support of registration.

FILING BASIS

The applicant must clarify its filing basis. The applicant stated “Applicant intends to use the mark in commerce under Trademark Act Section 1(a).” The applicant failed to meet the requirements for either Section 1(a) or Section 1(b). An application must specify and meet the requirements of at least one filing basis. 37 C.F.R. §2.32(a)(5); TMEP §806.

Section 1(a) Use Basis:

An application based on use of the mark in commerce must include the following:

(1) The following statement: “The mark is in use in commerce, as defined by 15 U.S.C. §1127, and was in use in such commerce on or in connection with the goods or services listed in the application as of the application filing date;”

(2) The date of first use of the mark anywhere on the goods or in connection with the services;

(3) The date of first use of the mark in commerce as a trademark or service mark;

(4) One “specimen” that shows the mark used on the goods, or in connection with the services, for each class of goods and services (i.e., shows how applicant actually uses the mark in commerce). If a specimen was not submitted with the initial application, applicant must submit the following statement: “The specimen was in use in commerce at least as early as the application filing date;” and

(5) Verification, in an affidavit or signed declaration under 37 C.F.R. §§2.20, 2.33, of the above statements and dates of use.

15 U.S.C. §1051(a); 37 C.F.R. §§2.34(a)(1), 2.59(a); TMEP §806.01(a).

Section 1(b) Intent to Use Basis:

An application based on a bona fide intention to use the mark in commerce must include the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §§2.20, 2.33:

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); TMEP §806.01(b).

If applicant has questions about its application or this Office action, please contact the assigned trademark examining attorney at the telephone number below.

/Tracy Cross/

Examining Attorney

Law Office 109

Phone: (571) 272-9271

Fax: (571) 273-9109

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.