Offc Action Outgoing

The assigned trademark examining attorney has reviewed the statement of use and has determined the following. Applicant’s specimens are unacceptable because they represent pages of a manual for another product. Further, the press release is not an acceptable specimen for goods.

Specimens

The specimens (manual and press release) are unacceptable because they do not show the applied-for mark in use in commerce. A statement of use 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. §§2.56, 2.88(b)(2); TMEP §§904, 940.07(a), 1109.09(b).

The manual’s first page does not include the proposed mark XCHANGE. The Treatment Delivery Manual applies to applicant’s CyberKnife System--referenced in the right upper corner of the first page of the manual and then referenced at the tops of every other page. The proposed mark first appears on page 11 of the manual under the table of contents.[1] Specifically, the term “option” in parenthesis follows the proposed mark with an ellipsis directing the reader to page 2-10. An examination of the same table of contents page reveals that other options are indicated and available for the CyberKnife System. These options are clearly designated by the term “option” appearing in parenthesis next to the component. Clearly these options are not included in the CyberKnife System and therefore would not come with the system. This is not the case where the robotic radiotherapy device is included with the CyberKnife System and therefore the manual functions as a part of the goods. See In re Ultraflight Inc., 221 USPQ 903, 906 (TTAB 1984). The goods are not associated with the manual. Applicant’s manual essentially promotes the goods associated with the proposed mark. Informational material that tells the prospective purchaser about the goods is unacceptable to support trademark use. TMEP §904.04(b). Consequently, the manual merely conveys information about the components available with the system; the XCHANGE component being one of them.

The press release is an unsuitable specimen. Materials such as invoices, announcements, order forms, bills of lading, instruction sheets, as well as other types of leaflets, brochures, and printed advertising material used as such, including catalogs, catalog sheets, circulars, publicity releases, and the like, do not constitute acceptable specimens for use on goods. See In re Bright of America, Inc., 205 USPQ 63 (TTAB 1979).

Section 45 of the Lanham Act, 15 U.S.C. §1127, as amended by the Trademark Law Revision Act of 1988, provides, in part, that a mark shall be deemed to be in use in commerce on goods when “it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale. . . .” Applicant's goods are not of the type where it would be impracticable to use the mark, such as a computer chip. See In re MediaShare Corp., 43 USPQ2d 1304, 1306 n.7 (TTAB 1997). Applicant has not made such a contention.

Applicant may respond to this refusal by submitting the following:

(1) A substitute specimen showing the mark in use in commerce for each class of goods specified in the statement of use; and

(2) The following statement, verified with an affidavit or a signed declaration under 37 C.F.R. §2.20: “The substitute specimen was in use in commerce prior to the expiration of the time allowed applicant for filing a statement of use.” 37 C.F.R. §2.59(b)(2); 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).

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

Pending a proper response, registration is refused because the specimen does not show the applied-for mark in use in commerce as a trademark. 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.56, 2.88; TMEP §§904, 904.07(a), 1109.09(b).

Applicant may not withdraw the statement of use. 37 C.F.R. §2.88(g); TMEP §1109.17.

Christopher L. Buongiorno

/Christopher L. Buongiorno/

Law Office 102

(571) 272-9251

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 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.

[1] Applicant has submitted selected pages of the manual.