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: 3/9/2008

 

This letter responds to applicant’s communication filed on December 19, 2007.

 

The following requirements have been satisfied and are now withdrawn:  (1) foreign registration; (2) amended identification of goods; and (3) prior registration.  TMEP §714.04.

 

Upon further review, the examining attorney has determined the following:

 

Mark Differs on Drawing and Foreign Certificate:

 

The mark on the drawing in the U.S. application is not acceptable because it does not correspond to the mark in the foreign registration.  The mark in a U.S. application must show a substantially exact representation of the mark that appears in the foreign registration.  37 C.F.R. §2.51; United Rum Merchants Ltd. v. Distillers Corp. (S.A.) Ltd., 9 USPQ2d 1481 (TTAB 1988); TMEP §§807.12(b) and 1011.01.

 

Therefore, applicant must submit a new drawing that conforms to the mark shown in the foreign registration but does not materially alter the mark in the U.S. application.  37 C.F.R. §2.72(c); TMEP §§807.14 et seq.

 

If applicant cannot submit a new drawing, applicant may amend the basis for registration from Section 44 to Section 1(a) or Section 1(b) of the Trademark Act, and satisfy the requirements for the chosen basis.  15 U.S.C. §§1051(a) and (b) and 1127; 37 C.F.R. §2.51; TMEP §§807.12, 807.12(b), 807.14, 1011.01 and 1011.03.  A foreign registration certificate is not required for a Section 1(a) or 1(b) basis.

 

If applicant amends the basis to Section 1(a) based on use in commerce, applicant must satisfy the following five requirements:

 

(1)       Submit the following statement:  “The mark is in use in commerce, as defined by 15 U.S.C. §1127, and was in use in such commerce on or in connection with the goods or services listed in the application on the application filing date”;

 

(2)       Specify the date of first use of the mark anywhere on the goods  or in connection with the services;

 

(3)       Specify the date of first use of the mark in commerce as a trademark or service mark; and

 

(4)       Submit one “specimen” that shows the mark used on the goods, or in connection with the services, for each class of goods and/or services (i.e., showing how the applicant actually uses the mark in commerce).  If the specimen was not filed with the application, applicant must submit the following statement:  “The specimen was in use in commerce at least as early as the application filing date.”

 

(5)     The four preceding requirements must be verified in an affidavit or signed declaration under 37 C.F.R. §§2.20 and 2.33.  Trademark Act Section 1(a), 15 U.S.C. §1051(a); 37 C.F.R. §§2.34(a)(1) and 2.59(a); TMEP §806.01(a).

 

If applicant amends the basis to Section 1(b) based on an intention to use the mark in commerce, applicant need only provide a statement to that effect.  TMEP §806.03(d).

 

 

 

/Anne Gustason/

Trademark Examining Attorney

U.S. Patent and Trademark Office

Law Office 117

(571) 272-9722

 

 

 

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 3/9/2008 FOR

APPLICATION SERIAL NO. 77123402

 

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=77123402&doc_type=OOA&mail_date=20080309 (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 3/9/2008.

 

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.