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:

THIS IS A FINAL ACTION.

This Office action supersedes any previous Office action issued in connection with this application. The examining attorney notes that the prior Final Office action contained several typographical errors. The examining attorney apologizes for any confusion and inconvenience caused.

This letter responds to applicant’s communication filed on May 03, 2013, (the “Response”) in which applicant:

Provided more information about the goods;
Provided a standard character claim;
Amended the classification of goods;
Amended the application to the Supplemental Register; and
Provided a specimen and declaration.

Nos. 1-4 are acceptable.

No. 5 is not accepted, because the declaration accompanying the specimen is defective.

The requirement for an acceptable specimen is now made FINAL for the reasons set forth below.

Trademark Act Sections 1(a)(1) and 45, 15 U.S.C. §§1051(a)(1), 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a), 2.64(a); TMEP §§904, 904.07(a).

Final Refusal: Specimen

As stated in the prior Office action, the specimen does not show the applied-for mark in use in commerce in connection with any of the goods specified in the application, and therefore is not acceptable.

Specifically, the specimen submitted with the application makes no reference to the mark, “35+” or to the goods listed in the application, namely, embryo culturing solutions.

The examining attorney also notes that the specimens provided with the Response would likely be acceptable if the accompanying declaration were not defective. Specifically, applicant’s declaration reads as follows:

“The trademark ‘35+’ was used in commerce at least as early as October 11, 2012, was used in international commerce at least as early as October 11, 2012, and is now in use in such commerce. The mark is being used by placing it on labels for the goods. Sample labels for the goods showing use of the mark in question are enclosed.”

Applicant also included the verified the dates per 37 C.F.R. §2.71(c); TMEP §904.05.

The declaration submitted with the Response is defective, because it does not state, as required below, that: “The specimen was in use in commerce at least as early as the filing date of the application.” Instead, of attesting that the applicant’s specimen was used in commerce, applicant’s declaration states that applicant’s trademark was used in commerce. This defect makes applicant’s substitute specimen not acceptable.

An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of goods identified in the application or amendment to allege use. 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). Therefore, applicant must satisfy one of the following, as appropriate:

(1) Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application (or prior to the filing of an amendment to allege use) and (b) shows the mark in actual use in commerce for the goods and/or services identified in the application.

(2) Amend the filing basis to intent to use under Section 1(b). This option will later necessitate additional fee(s) and filing requirements.

For an overview of both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/specimen.jsp.

The refusal of registration based on the failure to provide a specimen that shows the applied-for mark in use in commerce as a trademark is now made final. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a), 2.64(a); TMEP §§904, 904.07(a).

Advisory: Sample Declaration for a Specimen

Applicant may respond to the stated specimen refusal by submitting a verified specimen or amending the application to an intent to use filing basis under Trademark Act Section 1(b) by following the suggested directions below for responding either online or by mail.

If applicant responds to this Office action online via the Trademark Electronic Application System (TEAS), applicant should provide a specimen as follows: (1) answer “yes” to the TEAS response form wizard question to “submit a new or substitute specimen,” (2) attach a jpg or pdf file of the specimen, and (3) select the statement that “The specimen(s) was in use in commerce at least as early as the filing date of the application.” However, if applicant is responding by amending the application to a Section 1(b) filing basis, applicant should do the following: (1) answer “yes” to the TEAS response form wizard questions to “change filing basis” and for a “signed declaration,” respectively; (2) uncheck the box for “Filing Basis Section 1(a);” and (3) check the box for “Filing Basis Section 1(b).” Please note that these steps appear on different pages of the TEAS response form.

Whether submitting a specimen or amending the filing basis to Section 1(b), applicant must also personally sign or personally enter his/her electronic signature and date after the declaration at the end of the TEAS response form, and print or type the name of the signatory immediately below or adjacent to his/her signature or identify it elsewhere in the filing. See 37 C.F.R. §§2.34(a)(2), 2.59(a), 2.193(a), (c)-(d), (e)(1); TMEP §§611.01(c), 804.01(b).

If applicant experiences difficulty in submitting the required specimen, supporting statement and/or declaration, or changing the filing basis, please e-mail TEAS@uspto.gov for technical assistance regarding the TEAS response form.

If applicant responds to this Office action on paper, via regular mail, applicant may provide a verified specimen by (1) checking the first statement below and personally signing, dating, and printing or typing the name of the signatory in the declaration appearing below the statement; and (2) submitting a specimen showing the applied-for mark in use in commerce. See 37 C.F.R. §§2.20, 2.59(a), 2.193(a)(1), (d), (e)(1); TMEP §§611.01(b), 804.01(b), 904.05. If applicant is responding by amending the application to a Section 1(b) filing basis, applicant may check the second statement below, and personally sign, date, and enter the printed or typed name of the signatory in the declaration appearing below the statement. See 37 C.F.R. §§2.20, 2.34(a)(2), 2.193(a)(1), (d), (e)(1); TMEP §§611.01(b), 804.01(b), 806.03(c).

q The specimen was in use in commerce at least as early as the filing date of the application.

q 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 filing date of the application.

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)

Please be advised that the following persons are properly authorized to sign a verification or declaration on behalf of an applicant:

(1) A person with legal authority to bind the applicant (e.g., a corporate officer or general partner);

(2) A person with firsthand knowledge of the facts and actual or implied authority to act on behalf of the applicant; or

(3) An authorized attorney who has an actual written or verbal power of attorney or an implied power of attorney from the applicant.

37 C.F.R. §§2.33(a), 2.193(e)(1); TMEP §§611.03(a), 804.04; see 37 C.F.R. §§11.1, 11.14.

Proper Response to a Final Action

Applicant must respond within six months of the date of issuance of this final Office action or the application will be abandoned. 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a). Applicant may respond by providing one or both of the following:

(1) A response that fully satisfies all outstanding requirements;

(2) An appeal to the Trademark Trial and Appeal Board, with the appeal fee of $100 per class.

37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.

In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues. 37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters). The petition fee is $100. 37 C.F.R. §2.6(a)(15).

/Gilbert M. Swift/

Trademark Examining Attorney

Law Office 109

Tel. 1+(571) 272-9028

Gilbert.Swift@uspto.gov

TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

All informal e-mail communications relevant to this application will be placed in the official application record.

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 the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or 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/trademarks/teas/correspondence.jsp.