UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.

 

ISSUE/MAILING DATE: 7/30/2007

 

The assigned examining attorney has reviewed the statement of use and has determined the following.

 

Refusal:  Failure to Function as a Trademark – Improper Specimen

 

Registration is refused because the proposed mark, as used on the specimen of record, does not function as a trademark to indicate the source of the goods.  Trademark Act Sections 1, 3 and 45, 15 U.S.C. §§1051, 1053 and 1127; In re Moody’s Investors Service Inc., 13 USPQ2d 2043 (TTAB 1989); In re Signal Companies, Inc., 228 USPQ 956 (TTAB 1986); In re Hughes Aircraft Co., 222 USPQ 263 (TTAB 1984); TMEP §§1301.02 et seq.

 

The mark does not function as a trademark on the specimen because there is nothing showing use of the mark on the actual goods.  Applicant must submit a specimen showing the mark as it is used in commerce on the goods for which registration is sought.  37 C.F.R. §§2.56 and 2.88(b)(2).  Examples of acceptable specimens are tags, labels, instruction manuals, containers or photographs that show the mark on the goods or packaging.  TMEP §904.04 et seq.  Applicant must verify, with an affidavit or a declaration under 37 C.F.R. §2.20, that the substitute specimen was in use in commerce prior to the expiration of the time allowed to applicant for filing a statement of use.  37 C.F.R. §2.59(b); TMEP §904.09.

 

If an amendment of the dates‑of‑use clause is necessary in order to state the correct dates of first use, applicant must verify the amendment with an affidavit or a declaration in accordance with 37 C.F.R. §2.20.  37 C.F.R. §2.71(c); TMEP §903.05. 

 

This refusal will be withdrawn if applicant submits both (1) a substitute specimen showing use as a trademark, and (2) a statement that “the substitute specimen was in use in commerce prior to the expiration of the time allowed to applicant for filing a statement of use” verified with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.59(b); TMEP §904.09.

 

The following is a properly worded declaration under 37 C.F.R. §2.20.  At the end of the response, applicant should insert the declaration signed by a person authorized to sign under 37 C.F.R. §2.33(a).

 

The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that the facts set forth in this application are true; all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.

 

Responding to This Office Action

 

No set form is required for response to this Office action.  Applicant must respond to each point raised.  Applicant should simply set forth the required changes or statements and request that the Office enter them.

 

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

 

 

 

 

/Susan Kastriner Lawrence/

Trademark Examining Attorney

Law Office 116

(571) 272-9186

 

 

RESPOND TO THIS ACTION: If there are any questions about the Office action, please contact the assigned examining attorney. A response to this Office Action should be filed using the Office’s Response to Office action form available at http://www.gov.uspto.report/teas/eTEASpageD.htm.  If notification of this Office action was received via e-mail, no response using this form may be filed for 72 hours after receipt of the notification.  Do not attempt to respond by e-mail as 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.

 

 

 

 

                                                                

IMPORTANT NOTICE

USPTO OFFICE ACTION HAS ISSUED ON 7/30/2007 FOR

APPLICATION SERIAL NO. 77000333

 

Please follow the instructions below to continue the prosecution of your application:

  

VIEW OFFICE ACTION: Click on this link http://portal.gov.uspto.report/external/portal/tow?DDA=Y&serial_number=77000333&doc_type=OOA&mail_date=20070730 (or copy and paste this URL into the address field of your browser), or visit http://portal.gov.uspto.report/external/portal/tow and enter the application serial number to access the Office action.

 

PLEASE NOTE: The Office action may not be immediately available but will be viewable within 24 hours of this notification.

 

RESPONSE MAY BE REQUIRED: You should carefully review the Office action to determine (1) if a response is required; (2) how to respond; and (3) the applicable response time period. Your response deadline will be calculated from 7/30/2007.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise attempt to e-mail your response, as the USPTO does NOT accept e-mailed responses.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System response form at http://www.gov.uspto.report/teas/eTEASpageD.htm.

 

HELP: For technical assistance in accessing the Office action, please e-mail

TDR@uspto.gov.  Please contact the assigned examining attorney with questions about the Office action. 

 

        WARNING

1. The USPTO will NOT send a separate e-mail with the Office action attached.

 

2. Failure to file any required response by the applicable deadline will result in the ABANDONMENT of your application.