| To: | R.M. Wade & Co. (ekc@brownrask.com) |
| Subject: | TRADEMARK APPLICATION NO. 77110730 - WADE CHAINBOX - 94015.220 |
| Sent: | 2/15/2008 10:25:05 AM |
| Sent As: | ECOM101@USPTO.GOV |
| Attachments: | Attachment - 1 Attachment - 2 |
UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 77/110730
MARK: WADE CHAINBOX
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CORRESPONDENT ADDRESS: |
RESPOND TO THIS ACTION: http://www.gov.uspto.report/teas/eTEASpageD.htm
GENERAL TRADEMARK INFORMATION: http://www.gov.uspto.report/main/trademarks.htm
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APPLICANT: R.M. Wade & Co.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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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: 2/15/2008
This application has been reinstated by the Commissioner for Trademarks. The Office records have been searched again and no similar registered or pending mark has been found that would bar registration under Trademark Act Section 2(d). 15 U.S.C. §1052(d); TMEP §704.02.
A copy of the last Office action along with any supporting documents can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow. Enter the serial number of this application in the box labeled NUMBER and click on the SUBMIT button. The Office action can then be viewed by clicking the link labeled “Offc Action Outgoing” next to the Mail/Create Date of 06/06/2007 in Trademark Document Retrieval (TDR). If applicant has any problems viewing the Office action, please contact the trademark examining attorney.
If the previous Office action contained fee information or requirements, please confirm current fee information at http://www.uspto.gov.
Applicant has six months from the date of this Office action to respond to the issues raised in the previous Office action.
Mark differs on drawing and specimen
The mark depicted on the drawing disagrees with the mark on the specimen. In this case, the drawing displays the mark as “WADE CHAINBOX,” while the specimen shows the mark as “WADE CHAIN BOX.”
The mark shown on the drawing must be a substantially exact representation of the mark as used on or in connection with the goods and/or services, as shown by the specimen. 37 C.F.R. §2.51(a); see C.F.R. §2.72(a)(1).
Therefore, applicant must submit one of the following:
(1) A new drawing of the mark that agrees with the mark on the specimen but does not materially alter the original mark; 37 C.F.R. §2.72(a); TMEP §§807.14 et seq.; or
(2) A substitute specimen that shows use of the mark that appears on the drawing, and 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 at least as early as the filing date of the application.” 37 C.F.R. §2.59(a); 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).
If applicant cannot satisfy the above requirements, applicant may amend the Section 1(a) filing basis (use in commerce) to Section 1(b) (intent to use basis), for which no specimen is required. However, should applicant amend the basis to Section 1(b), registration cannot be granted until applicant later amends the application back to use in commerce by filing an acceptable allegation of use with a proper specimen. 15 U.S.C. §1051(c); 37 C.F.R. §§2.76, 2.88; TMEP Chapter 1100.
In order to amend to Section 1(b), applicant must submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “Applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application as of the filing date of the application.” 15 U.S.C. §1051(b); 37 C.F.R. §§2.34(a)(2), 2.35(b)(1); TMEP §806.01(b).
Disclaimer
Applicant must insert a disclaimer of either “CHAINBOX” or “CHAIN BOX” in the application because the wording immediately describes the goods, which are essentially a chain attached to a metal box. Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.08(a)(i). Also note that the applicant’s Reg. No. 3226191 is on the Supplemental Register. It is of the mark, “CHAINBOX,” for the same goods as this application.
The following is the accepted standard format for a disclaimer:
No claim is made to the exclusive right to use “CHAINBOX” apart from the mark as shown.
-or-
No claim is made to the exclusive right to use “CHAIN BOX” apart from the mark as shown.
/Ira Goodsaid/
Ira Goodsaid
Trademark Examining Attorney
Law Office 101
571-272-9166
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.
