Offc Action Outgoing

This letter responds to applicant’s communication on March 20, 2009. In the aforementioned communication, applicant requested that applicant’s prior application U.S. Serial No. 79041564 be converted to the present application due to the expiration of applicant’s international registration. This request has been grants. The examining attorney has reviewed the transformed application and has determined the following.

Filing Basis Required

Applicant has not specified a filing basis for the application. An application must specify and meet the requirements of at least one filing basis. 37 C.F.R. §2.32(a)(5); TMEP §806.

An application may be filed based on any of the following:

(1) Use of the mark in commerce under Trademark Act Section 1(a);

(2) A bona fide intention to use the mark in commerce under Section 1(b)

(3) A claim of priority, based on a foreign application filed within six months of the filing date of the U.S. application, under Section 44(d); and/or

(4) A foreign registration of a mark in applicant’s country of origin under Section 44(e).

15 U.S.C. §§1051(a)-(b), 1126(d)-(e); TMEP §806.01(a)-(d).

Therefore, applicant must (1) amend the application to specify at least one filing basis, and (2) satisfy all the requirements for the basis or bases asserted. TMEP §806.

Depending on the circumstances, applicant may be entitled to assert more than one of the above bases. When claiming more than one basis, applicant must (1) satisfy all requirements for each basis claimed; (2) state that more than one basis is being asserted; and (3) list separately each basis, followed by the goods or services to which that basis applies. 37 C.F.R. §2.34(b)(2); TMEP §806.02(a).

Although multi-basis applications are permitted, applicant cannot assert both use in commerce and intent to use for the same goods or services. 37 C.F.R. §2.34(b)(1); TMEP §806.02(b).

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 on the application filing date;”

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

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).

An application based on a foreign application for the same mark and the same goods or services must include the following:

(1) A “claim of priority,” that is, the U.S. application was filed within six months of the filing date of the foreign application;

(2) The filing date and foreign country of the first regularly filed foreign application (“regular national filing” means “any filing that is adequate to establish the date on which the application was filed in the country concerned, whatever may be the subsequent fate of the application,” Paris Convention for the Protection of Industrial Property, art. 4); or state that the U.S. application is based upon a subsequent regularly filed application in the same foreign country, and that any prior-filed application has been withdrawn, abandoned or otherwise disposed of, without having been laid open to public inspection and without having any rights outstanding, and has not served as a basis for claiming a right of priority;

(3) The serial number of the foreign application upon which the priority claim is based; and

(4) 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 application filing date.”

15 U.S.C. §1126(d); 37 C.F.R. §2.34(a)(4); TMEP §806.01(c).

An application based on a foreign registration must include the following:

(1) A true copy, a photocopy, a certification, or a certified copy of a registration of the mark in applicant’s country of origin. A copy of a foreign registration must be a document issued to an applicant by or certified by the intellectual property office in the applicant’s country of origin. TMEP §1004.01. Applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party or extend reciprocal registration rights to nationals of the United States by law. TMEP §1002.01.;

(2) An English translation of the foreign registration if the foreign certificate of registration is not written in English. The translator should sign the translation. TMEP §1004.01(b).; and

(3) The following statement, verified in 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 identified goods or services as of the application filing date.”

15 U.S.C. §1126(b), (e); 37 C.F.R. §2.34(a)(3); TMEP §806.01(d).

Declaration Required

The application was not signed and verified, which are application requirements. 15 U.S.C. §1051(a); 37 C.F.R. §§2.33, 2.34(a)(1). Therefore, applicant must verify, in a signed affidavit or declaration under 37 C.F.R. §§2.20, 2.33, the statements specified further below. 15 U.S.C. §1051(a)(3); 37 C.F.R. §2.33(b)(1), (c); TMEP §§804.02, 806.01(a).

If applicant responds to this Office action online via the Trademark Electronic Application System (TEAS), applicant may satisfy this requirement by answering “yes” to the TEAS response form wizard question relating to submitting a “signed declaration,” and properly signing the declaration appearing towards the end of the TEAS response form by either (1) entering in the signature block any combination of letters, numbers, spaces and/or punctuation marks that the filer has adopted as a signature, placed between two forward slash (/) symbols (e.g., /john doe/); (2) e-mailing the completed form from within TEAS to a second party for his/her electronic signature, which will then be automatically returned to the original preparer for submission with the response form; or (3) attaching a jpg or pdf image of a declaration under 37 C.F.R. §2.20 (see statements and declaration paragraphs below), together with a pen-and-ink signature. See 37 C.F.R. §§2.33(d), 2.193(c)(1)(iii); TMEP §804.05. For each method, applicant must either personally sign or manually enter his/her electronic signature and provide the date of “signing.” TMEP §804.05; see TMEP §804.01(b). Applicant should also set forth the signatory’s name and position beneath the signature. See TMEP §§712 et seq., 804.05.

If applicant responds to this Office action on paper, via regular mail, applicant may satisfy this requirement by providing the following statements and declaration at the end of the response, personally signed and dated. See 37 C.F.R. §§2.20, 2.33; TMEP §§804.02, 804.05, 806.01(a).

The following declaration satisfies the requirements under a Section 1(a) filing basis:

STATEMENTS: He/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered; the applicant is using the mark shown in the drawing; that the mark is in use in commerce and was in use in commerce on or in connection with the goods and/or services listed in the application as of the application filing date; the specimen was in use in commerce as of the filing date of the application; that the facts set forth in the application are true and correct; that to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive.

DECLARATION: 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 therefrom, declares that 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)

The following declaration satisfies the requirements under a Section 1(b) or Section 44 filing basis:

STATEMENTS: He/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be entitled to use the mark in commerce; that applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods and/or services listed in the application as of the application filing date; that the facts set forth in the application are true and correct; that to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive.

_____________________________

(Signature)

_____________________________

(Print or Type Name and Position)

_____________________________

(Date)

Response Guidelines

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.gov.uspto.report/teas/index.html. However, 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 mailing date 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).

The response should address each refusal and/or requirement raised in the Office action. If a refusal has issued, applicant can argue against the refusal; i.e., applicant can submit arguments and evidence as to why the refusal should be withdrawn and the mark should register. To respond to requirements, applicant should set forth in writing the required changes or statements and request that the Office enter them into the application record.

The response must be personally signed or the electronic signature manually entered 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 following legal authorities govern the processing of trademark and service mark applications by the Office: The Trademark Act of 1946, 15 U.S.C. §§1051 et seq.; The Trademark Rules of Practice, 37 C.F.R. Part 2; and the Office’s Trademark Manual of Examining Procedure (TMEP) (5th ed. 2007). These legal resources are available online at http://www.gov.uspto.report/main/trademarks.htm.

“TMEP” refers to the Office’s Trademark Manual of Examining Procedure (5th ed. 2007), available on the United States Patent and Trademark Office website at www.gov.uspto.report/main/trademarks.htm. The TMEP is a detailed administrative manual written by the Office to explain the laws and procedures that govern the trademark/service mark application, registration and post registration processes.

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

/Dannean J Hetzel/

Trademark Examining Attorney

Law Office 106

Phone 571-272-8858

Fax 571-273-9106

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.