Offc Action Outgoing

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.

ISSUE/MAILING DATE:

The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

NO LIKELIHOOD OF CONFUSION FOUND

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).

DRAWING AND SPECIMEN DO NOT MATCH

The mark on the specimen disagrees with the mark on the drawing. In this case, the specimen displays the mark as “ALLURE EC-SMART-SENSOR-100” or “ALLURE EC-SMART-SENSOR-200;” and the drawing shows the mark as “ALLURE.”

An application based on Trademark Act 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(a); TMEP §§904, 904.07(a). The mark on the drawing must be a substantially exact representation of the mark on the specimen. 37 C.F.R. §2.51(a); TMEP §807.12(a); see 37 C.F.R. §2.72(a)(1).

The drawing of the mark can be amended only if the amendment does not materially alter the mark as originally filed. 37 C.F.R. §2.72(a)(2); see TMEP §§807.12(a), 807.14 et seq. However, amending the mark in the drawing to conform to the mark on the specimen would be a material alteration in this case because the mark on the specimen creates a different commercial impression from the mark on the drawing. Specifically, the addition of “EC-SMART-SENSOR-*00” creates an additional element not found in the original drawing. The current specimen of record shows that wording each and every time following the word “ALLURE” in the same size font, and as a result, consumers would not separate the “EC-SMART-SENSOR-“ element from “ALLURE.”

Therefore, applicant must submit the following:

(1) A substitute specimen showing use in commerce of the mark on the drawing. See TMEP §807.12(a).; 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.” See 37 C.F.R. §§2.59(a), 2.193(e)(1); 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.

Examples of specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale. See TMEP §§904.03 et seq.

If applicant cannot satisfy 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), for which no specimen is required. 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. 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: “Applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods 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), 2.193(e)(1).

Pending receipt of a proper response, registration is refused because the specimen does not show the applied-for mark in use in commerce as a trademark. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).

Applicant must also respond to the requirements set forth below:

STANDARD CHARACTER CLAIM

The drawing shows the mark with very little stylization; thus, it is not clear whether applicant intends to depict the mark in standard characters or in a special form drawing format. TMEP §807.03(h).

A standard character drawing must show the applied-for mark depicted in Latin characters, Roman or Arabic numerals, with common punctuation or diacritical marks, with no design element or stylization of lettering/numbers, and no claim to any particular font, style, size or color. 37 C.F.R. §2.52(a); TMEP §807.03(a). A special form drawing can include stylization of lettering/numbers, as well as design elements. 37 C.F.R. §2.52(b); TMEP §807.04(a).

If a standard character drawing was intended, then applicant must submit the following statement: “The mark consists of standard characters without claim to any particular font style, size, or color.” 37 C.F.R. §2.52(a); TMEP §807.03(a). If a special form drawing was intended, then applicant must state so for the record and ensure that an accurate description of the mark is included in the record. See 37 C.F.R. §2.52(b); TMEP §§807.04 et seq.

PLEASE NOTE – If applicant elects NOT to submit a standard character claim, then applicant’s substitute specimen must show the mark in the same font as the mark in the drawing.

IDENTIFICATION OF GOODS

The wording “sensors, regulators,” and “relays” in the identification of goods is indefinite and must be clarified because applicant must state what the sensors are designed to detect, as well as whether the regulators and relays are electric. See TMEP §1402.01. Applicant may adopt the following identification of goods, if accurate:

International Class 9 – “Thermostats, temperature sensors, voltage regulators, timers, electric relays and microprocessor-based controllers and software for controlling heating, ventilation, or air conditioning systems.”

An applicant may amend an identification of goods only to clarify or limit the goods; adding to or broadening the scope of the goods is not permitted. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07 et seq.

For assistance with identifying and classifying goods in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.

MULTIPLE CLASS ADVISORY

For an application with more than one international class, called a “multiple-class application,” an applicant must meet all of the requirements below for those international classes based on use in commerce:

(1) LIST GOODS BY INTERNATIONAL CLASS: Applicant must list the goods by international class;

(2) PROVIDE FEES FOR ALL INTERNATIONAL CLASSES: Applicant must submit an application filing fee for each international class of goods not covered by the fee already paid (confirm current fee information at http://www.uspto.gov, click on “View Fee Schedule” under the column titled “Trademarks”); and

(3) SUBMIT REQUIRED STATEMENTS AND EVIDENCE: For each international class of goods, applicant must also submit the following:

(a) DATES OF USE: Dates of first use of the mark anywhere and dates of first use of the mark in commerce, or a statement that the dates of use in the initial application apply to that class. The dates of use, both anywhere and in commerce, must be at least as early as the filing date of the application.;

(b) SPECIMEN: One specimen showing the mark in use in commerce for each international class of goods. Applicant must have used the specimen in commerce at least as early as the filing date of the application. If a single specimen supports multiple international classes, applicant should indicate which classes the specimen supports. Examples of specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, or displays associated with the goods at their point of sale. See TMEP §§904.03 et seq.

(c) STATEMENT: The following statement: “The specimen was in use in commerce on or in connection with the goods listed in the application at least as early as the filing date of the application.”; and

(d) VERIFICATION: Applicant must verify the statements in 3(a) and 3(c) (above) in an affidavit or signed declaration under 37 C.F.R. §2.20. Verification is not required where (1) the dates of use for the added class are stated to be the same as the dates of use specified in the initial application, and (2) the original specimens are acceptable for the added class(es).

See 15 U.S.C. §§1051(a), 1112, 1127; 37 C.F.R. §§2.32(a)(5), 2.34(a)(1), 2.56(a), 2.71(c), 2.86(a), 2.193(e)(1); TMEP §§1403.01, 1403.02(c).

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

/Jason Paul Blair/

Examining Attorney

Law Office 104

Phone - (571) 272-8856

Fax - (571) 273-8856

TO RESPOND TO THIS LETTER: Use the Trademark Electronic Application System (TEAS) response form at http://teasroa.gov.uspto.report/roa/. Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov.

WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.

PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using Trademark Applications and Registrations Retrieval (TARR) at http://tarr.gov.uspto.report/. Please keep a copy of the complete TARR screen. If TARR shows no change for more than six months, call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/teas/eTEASpageE.htm.