| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/2009) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 77115128 |
| LAW OFFICE ASSIGNED | LAW OFFICE 117 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
|
Applicant’s counsel is in receipt of the Office Action issued September 7, 2007 in the above matter. After careful consideration of its contents and correspondence with Applicant, counsel responds as follows. REMARKS In the most recent Office Action, acceptance of Applicant’s specimen of use submitted to support the Amendment to Allege Use has been refused. The Examining Attorney has initially determined that although the mark is displayed, the specimen does not show the necessary product ordering information or a web link for a consumer to order Applicant’s goods marketed with its claimed FIESTA COLORS trademark. Applicant respectfully disagrees with the Examining Attorney’s determination. The goods in the instant application are “bank checks” which are, by their very nature, secure financial documents. To purchase Applicant’s bank checks via Applicant’s secure web site, the purchaser must log-in and submit bank routing, transit, and bank account numbers, so that the bank checks can be printed. The log-in, routing, transit and account number information entry points are clearly depicted on the specimen, and Applicant maintains that the specimen should be acceptable because the web link for ordering the bank checks is clearly depicted. In addition, with the log-in information, there are links to information pertaining to as to why a customer must log-in to place the order, and also links to privacy and security information, and to help. Finally, the Examining Attorney will note the customer service link appearing at the top of the specimen. Accessing this link provides check order status and information to the purchaser as to how the bank checks can be customized during the order process, a telephone contact link, and a link for frequently asked questions, including those pertaining to check order processing. All of the above information is readily accessible from the web page submitted as to the specimen to support Applicant’s Amendment to Allege Use. Applicant respectfully submits that the necessary product ordering information and the web link for ordering the goods are evidenced and provided in the specimen of record. Information associated with the various links referenced above is submitted herewith as Exhibit 1, but not as substitute specimens. It is provided for purposes of clarification to support Applicant’s contention that the specimen of use originally submitted should be acceptable. In view of the fact that specimen issue is the only issue raised in the Office Action, Applicant submits that the above clarifying information should be sufficient for the Examining Attorney to now accept the original specimen of use, and prompt action in that regard is respectfully requested. If further information is required, the Examining Attorney is requested to contact undersigned counsel by telephone to facilitate the prompt prosecution of this application. |
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_12411614-100809943_._S11642.ex1.pdf |
| CONVERTED PDF FILE(S) (4 pages) |
\\TICRS2\EXPORT14\771\151\77115128\xml1\ROA0002.JPG |
| \\TICRS2\EXPORT14\771\151\77115128\xml1\ROA0003.JPG | |
| \\TICRS2\EXPORT14\771\151\77115128\xml1\ROA0004.JPG | |
| \\TICRS2\EXPORT14\771\151\77115128\xml1\ROA0005.JPG | |
| DESCRIPTION OF EVIDENCE FILE | Exhibit 1 - depictions of information available at applicant's web site |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Kevin G. Smith/ |
| SIGNATORY'S NAME | Kevin G. Smith |
| SIGNATORY'S POSITION | Attorney of Record for Applicant |
| DATE SIGNED | 09/19/2007 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Wed Sep 19 10:11:33 EDT 2007 |
| TEAS STAMP | USPTO/ROA-XX.X.XXX.XX-200 70919101133984654-7711512 8-40091f8d57b25eb74dcd6a6 192325f65df-N/A-N/A-20070 919100809943014 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/2009) |
Applicant’s counsel is in receipt of the Office Action issued September 7, 2007 in the above matter. After careful consideration of its contents and correspondence with Applicant, counsel responds as follows.
REMARKS
In the most recent Office Action, acceptance of Applicant’s specimen of use submitted to support the Amendment to Allege Use has been refused. The Examining Attorney has initially determined that although the mark is displayed, the specimen does not show the necessary product ordering information or a web link for a consumer to order Applicant’s goods marketed with its claimed FIESTA COLORS trademark. Applicant respectfully disagrees with the Examining Attorney’s determination.
The goods in the instant application are “bank checks” which are, by their very nature, secure financial documents. To purchase Applicant’s bank checks via Applicant’s secure web site, the purchaser must log-in and submit bank routing, transit, and bank account numbers, so that the bank checks can be printed. The log-in, routing, transit and account number information entry points are clearly depicted on the specimen, and Applicant maintains that the specimen should be acceptable because the web link for ordering the bank checks is clearly depicted.
In addition, with the log-in information, there are links to information pertaining to as to why a customer must log-in to place the order, and also links to privacy and security information, and to help.
Finally, the Examining Attorney will note the customer service link appearing at the top of the specimen. Accessing this link provides check order status and information to the purchaser as to how the bank checks can be customized during the order process, a telephone contact link, and a link for frequently asked questions, including those pertaining to check order processing.
All of the above information is readily accessible from the web page submitted as to the specimen to support Applicant’s Amendment to Allege Use. Applicant respectfully submits that the necessary product ordering information and the web link for ordering the goods are evidenced and provided in the specimen of record.
Information associated with the various links referenced above is submitted herewith as Exhibit 1, but not as substitute specimens. It is provided for purposes of clarification to support Applicant’s contention that the specimen of use originally submitted should be acceptable.
In view of the fact that specimen issue is the only issue raised in the Office Action, Applicant submits that the above clarifying information should be sufficient for the Examining Attorney to now accept the original specimen of use, and prompt action in that regard is respectfully requested.
If further information is required, the Examining Attorney is requested to contact undersigned counsel by telephone to facilitate the prompt prosecution of this application.
