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: 12/14/2007

 

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

 

SPECIMENS UNACCEPTABLE – CLASS 1 AND 4

 

The specimen is not acceptable for International Classes 1 and 4 because it consists of advertising material for goods.  Section 45 of the Trademark Act requires use “on the goods or their containers or the displays associated therewith or on tags or labels affixed thereto.”  15 U.S.C. §1127; see 37 C.F.R. §2.56(b)(1); TMEP §§904.04(b)-(c). 

 

Material that functions merely to tell prospective purchasers about the goods, or to promote the sale of the goods, is unacceptable to show trademark use.  Indeed, invoices, business cards, announcements, price lists, listings in trade directories, order forms, bills of lading, leaflets, brochures, publicity releases, advertising circulars and other printed advertising material, while normally acceptable for showing use in connection with services, generally are not acceptable specimens for showing trademark use in connection with goods.  See In re MediaShare Corp., 43 USPQ2d 1304, 1307 (TTAB 1997); In re Schiapparelli Searle, 26 USPQ2d 1520, 1522 (TTAB 1993); TMEP §§904.04(b)-(c).

 

A statement of use must include a specimen showing the applied-for mark in use in commerce for each class of goods in the statement of use.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.56, 2.88(b)(2); TMEP §§904, 904.07(a), 1109.09(b).

 

Applicant may respond to this refusal by submitting the following:

 

(1)   A substitute specimen showing the mark in use in commerce each class of the goods specified in the statement of use; 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 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 for International Classes 1 and 4.  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.

 

DRAWING AND SPECIMENS DO NOT MATCH – CLASS 7, 9, AND 11

 

The mark depicted on the International Class 7, 9 and 11 specimens disagree with the mark on the drawing.  In this case, the specimens display the mark as “HYDROGEN PRODUCED BY THE FORMING PROCESS,” while the drawing shows the mark as “BIOFORMING.”

 

The mark shown on the drawing must be a substantially exact representation of the mark as used on or in connection with the goods, as shown by the specimen.  37 C.F.R. §2.51(b); see C.F.R. §2.72(a)(1).  However, applicant may not amend the drawing to conform to the display on the specimen because the essence or character of the mark would be materially altered; in other words, the mark on the specimen creates a different commercial impression from the mark on the drawing.  37 C.F.R. §2.72(b); TMEP §§807.14 et seq. 

 

Therefore, applicant must submit the following:

 

(1)   A substitute specimen showing the mark that appears on the drawing; 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 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).

 

Pending a proper response, registration is refused because the specimen does not show the applied-for mark in use in commerce as a trademark for the identified goods in International Classes 7, 9, and 11.  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.

 

RESPONDING TO A PARTIAL REFUSAL

 

Applicant may respond to the stated refusal by doing one of the following:

 

(1)   deleting the classes to which the refusals pertain;

 

(2)   arguing against the refusal of the combined application as a whole; or

 

(3)   filing a request to divide out the services that have not been refused registration, so that the mark may be published for opposition in the class to which the refusal does not pertain (See 37 C.F.R. §2.87 and TMEP §§1110.05 and 1403.03 regarding the requirements for filing a request to divide).

 

If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at the number below.

 

 

/Jason Paul Blair/

Examining Attorney

Law Office 104

Phone - (571) 272-8856

Fax - (571) 273-8856

 

 

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.

 

 

 

 

                                                                

IMPORTANT NOTICE

USPTO OFFICE ACTION HAS ISSUED ON 12/14/2007 FOR

APPLICATION SERIAL NO. 77011457

 

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

  

VIEW OFFICE ACTION: Click on this link http://tmportal.gov.uspto.report/external/portal/tow?DDA=Y&serial_number=77011457&doc_type=OOA&mail_date=20071214 (or copy and paste this URL into the address field of your browser), or visit http://tmportal.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 12/14/2007.

 

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.