Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/2009)

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PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/2009)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 77067666 has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

 

Applicant has submitted specimens consisting of a screenprint from Applicant’s website, and a photo of signage outside of Applicant’s facility where the goods are created. Applicant believes that the specimens of record are sufficient to demonstrate use with Applicant’s class 004 goods. 

 

Applicant sells its goods in bulk quantities.  As such, it is not feasible for Applicant to affix a label, tag, etc. to the goods.  Applicant believes the specimens submitted paint a clear and realistic picture as to the marriage between Applicant’s promotion of the mark (i.e. specimens) and its goods.  Applicant submits that these specimens demonstrate use of the mark on or in connection with the goods.  See TMEP § 904.04  ("The office may accept another document related to the goods or the sale of the goods when it is not possible to place the mark on the goods, packaging, or displays associated with the goods. This provision is not intended as a general alternative to submitting labels, tags, containers or displays associated with the goods; it applies only to situations where the nature of the goods makes use on them impractical. . . . For example, it may be impractical to place the mark on the goods or packaging for the goods if the goods are natural gas, grain that is sold in bulk, or chemicals that are transported only in tanker cars.") (Emphasis added).

 

Applicant also points out that other applications filed contemporaneous with the Subject Mark, which contained identical specimens, have been approved for publication.  More specifically, the marks “OTTER CREEK” (Serial No. 77/070139) and Otter Creek Ethanol & design (Serial No. 77070214) were published for opposition on August 28, 2007 and August 14, 2007, respectively.  The USPTO is required to review all of the information in the record and not view the specimens in a vacuum.  See In re Ancor Holdings, LLC and TMEP Section 1301.04.

 

In the alternative, Applicant is submitting a substitute specimen which consists of a bill of lading.  This document depicts the Subject Mark, refer to the goods, and accompanies the same at the time of delivery. 

 

In summary, Applicant believes the original specimens sufficiently depict the Subject Mark in commerce.  In the alternative, the document above-referenced qualifies as a specimen pursuant to TMEP § 904.04.  Either or both of these are acceptable specimens for Applicant’s goods.  A Notice of Publication is respectfully solicited.

 

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 004 for Bio-fuels, namely, ethanol fuel
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 03/00/2004 and first used in commerce at least as early as 03/00/2004, and is now in use in such commerce.

Proposed: Class 004 for Bio-fuels, namely, ethanol fuel
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 03/00/2004 and first used in commerce at least as early as 03/00/2004, and is now in use in such commerce.
Applicant hereby submits a new specimen for Class 004. The specimen(s) submitted consists of A bill of lading which accompanies the goods at the time of shipment.
For an application based on 1(a), Use in Commerce, "The substitute specimen(s) was in use in commerce as of the filing date of the application."
Specimen File1

ADDITIONAL STATEMENTS
Supplemental Register
"The applicant seeks registration of the mark on the Supplemental Register (i.e., a change of the words 'Principal Register' to 'Supplemental Register')."

SIGNATURE(S)
Declaration Signature
If the applicant is seeking registration under Section 1(b) and/or Section 44 of the Trademark Act, the applicant had a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. 37 C.F.R. Secs. 2.34(a)(2)(i); 2.34 (a)(3)(i); and 2.34(a)(4)(ii). If the applicant is seeking registration under Section 1(a) of the Trademark Act, the mark was in use in commerce on or in connection with the goods or services listed in the application as of the application filing date. 37 C.F.R. Secs. 2.34(a)(1)(i). 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 he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. §1051(b), he/she believes applicant to be entitled to use such mark in commerce; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; that if the original application was submitted unsigned, that all statements in the original application and this submission made of the declaration signer's knowledge are true; and all statements in the original application and this submission made on information and belief are believed to be true.

Signature: /troy leonard/      Date: 10/16/2007
Signatory's Name: Troy Leonard
Signatory's Position: Attorney of Record

Response Signature
Signature: /troy leonard/     Date: 10/16/2007
Signatory's Name: Troy Leonard
Signatory's Position: Attorney of Record

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the applicant's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the applicant in this matter: (1) the applicant has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the applicant has filed a power of attorney appointing him/her in this matter; or (4) the applicant's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.

        
Serial Number: 77067666
Internet Transmission Date: Tue Oct 16 15:19:24 EDT 2007
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XXX-2007101615192429
5323-77067666-40085d1ed61ca13d7ddae4b82c
9ba1288-N/A-N/A-20071016144051262804