Offc Action Outgoing

The examining attorney has reviewed the applicant’s response, filed on 5/14/10, to the non-final Office action mailed on 4/5/10, and has determined as follows:

Registration is refused because applicant does not appear to have been entitled to use the mark as of the filing date of the application.

The proposed amended identification of goods is acceptable.

The multi-class application requirements are moot since the applicant has confined the proposed amended identification to one class.

The proposed amendment of the mark from one in which the flame is to the left of the letters “IL” to one in which the flame is above what is now being described as a stylized grill design constitutes an impermissible material alteration of the mark. Therefore, the proposed amendment of the mark is unacceptable. Because this is a new issue, this Office action is not being made final.

The requirement that the applicant amend the description of the mark is continued.

The disclaimer of “IL” apart from the mark as shown is acceptable.

The requirement that the applicant comply with the information requirement is continued.

Please see below for details of numbers 1, 4, 5 and 7 above.

REGISTRATION REFUSED BECAUSE APPLICANT DOES NOT APPEAR TO HAVE BEEN ENTITLED TO USE THE MARK AS OF THE FILING DATE OF THE APPLICATION

Registration is refused because applicant does not appear to have been entitled to use the mark as of the filing date of the application. Trademark Act Section 1, 15 U.S.C. §1051; see TMEP §1201.02(b). The application identifies the owner of the mark as Dale Stredney, an Illinois corporation; however, the applicant’s response to the requirement in the first Office action that it clarify the applicant entity information indicates that the owner of the mark was Heartland Select LLC, an Illinois limited liability company.

An application must be filed by the party who owns or is entitled to use the mark as of the application filing date. See 15 U.S.C. §§1051, 1126; TMEP §§1201, 1201.02(b). If the identified applicant does not own or is not entitled to use the mark on the application filing date, the application is void. See 37 C.F.R. §2.71(d); Huang v. Tzu Wei Chen Food Co., 849 F.2d 1458, 7 USPQ2d 1335 (Fed. Cir. 1988); Great Seats, Ltd. v. Great Seats, Inc., 84 USPQ2d 1235 (TTAB 2007); Am. Forests v. Sanders, 54 USPQ2d 1860 (TTAB 1999), aff’d, 232 F.3d 907 (Fed. Cir. 2000) (holding an intent-to-use application void because it was filed by an individual when a partnership was entitled to use the mark on the application filing date); TMEP §1201.

Applications filed in the name of the wrong party cannot be cured by amendment or assignment. 37 C.F.R. §2.71(d); see TMEP §803.06.

PROPOSED AMENDMENT OF THE MARK UNACCEPTABLE/MARK REMAINS AS IT APPEARED IN THE ORIGINAL APPLICATION

Applicant has requested that the drawing of the mark be amended. The original drawing shows the mark as a stylized flame design and to the right of the design, the letters IL; the amended drawing would show the mark as a flame design above a horizontal line, which in turn is above a line with a “leg” pointing downward. The design below the flame design represents a stylized grill.

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 what is the essence of the original mark, and the new form must create the impression of being essentially the same mark.” In re Hacot-Columbier, 105 F.3d 616, 620, 41 USPQ2d 1523, 1526 (Fed. Cir. 1997) (quoting 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(d).

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 in the original application, the portion of the mark that the applicant states was intended to be a stylized grill design is “read” as IL, whereas in the proposed amended mark, it is “read” as a design of some kind. Therefore, although the flame design creates a similar commercial impression whether on its “side” or straight up, what was intended as a stylized grill design calls to mind IL, i.e., the state of Illinois, when placed on its side as it was in the original drawing of the mark.

Accordingly, the proposed amendment will not be entered and thus, the previously acceptable drawing of the mark will remain operative. Applicant must respond by arguing in favor of the proposed amendment and/or withdrawing the proposed amendment. See TMEP §§714.03, 714.05(a), 807.17.

REQUIREMENT THAT APPLICANT AMEND THE DESCRIPTION OF THE MARK IS CONTINUED

The description of the mark is accurate but incomplete because it does not describe all the significant aspects of the applied-for mark. Applications for marks not in standard characters must include an accurate and concise description of the entire mark that identifies literal elements as well as any design elements. See 37 C.F.R. §2.37; TMEP §§808 et seq.

Therefore, applicant must provide a more complete description of the applied-for mark. The following is suggested:

The mark consists of a stylized symbol of a flame positioned to the left of the letters IL.

INFORMATION REQUIREMENT CONTINUED

In the first Office action, the examining attorney issued an information requirement to which the applicant has not responded. Specifically, applicant must provide a written statement explaining whether the goods will be manufactured, packaged, shipped from, sold in or will have any other connection with the geographic location named in the mark, i.e., Illinois or “IL.” See 37 C.F.R. §2.61(b); TMEP §1210.03. The examining attorney assumes from the applicant’s entry of the disclaimer of “IL” that the goods do, in fact, originate in Illinois, but the applicant has not explicitly responded to this question. Therefore, the information requirement is continued.

GENERAL 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. 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

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

Nancy Clarke

/nancy clarke/

Trademark Examining Attorney

Law Office 102

Tel. (571) 272-9253

E-mail address: nancy.clarke@uspto.gov

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.