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: 8/30/2007

 

The assigned examining attorney has reviewed the referenced application and has determined the following.

 

The examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02.

 

Mark Differs on Drawing and Specimen

 

The mark depicted on the amended drawing disagrees with the mark on the specimen.  In this case, the drawing displays the mark as having a different design between the letters “I” and “N” than the design on the specimen.

 

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 simply revert back to the original drawing submitted at the time of filing the application; 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 §904.09.  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) and 2.35(b)(1); TMEP §806.01(b).

 

The following is a properly worded declaration under 37 C.F.R. Section 2.20.  At the end of the response, the applicant should insert the declaration signed by someone authorized to sign under 37 C.F.R. Section 2.33(a)[1].

 

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 the facts set forth in this application are true; all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.

 

 

                        _____________________________                                  

                                    (Signature)

                        _____________________________

                        (Print or Type Name and Position)

                        _____________________________

                                    (Date)

 

Description of Mark Not Needed

 

Applicant’s description of the mark will not be printed on any registration that may issue from this application.  TMEP §808.03.  The description is unnecessary because the mark is composed of easily recognized letters, numerals, designs, or figurative elements.  TMEP §§808.01(a) and 808.01(b). 

 

General Response Guidelines

 

There is no required format or form for responding to this Office action.  The Office recommends applicants use the Trademark Electronic Application System (TEAS) to respond to Office actions online at http://www.gov.uspto.report/teas/index.html.  However, if applicant responds on paper via regular mail, the response should include the following information:  (1) the name and law office number of the examining attorney; (2) the serial number of this application; (3) the mailing date of this Office action; and (4) applicant's telephone number.

 

The response should address each refusal and/or requirement raised in the Office action.  If a refusal has issued, applicant may wish to argue against the refusal, i.e., submit arguments and/or evidence as to why the refusal should be withdrawn and why the mark should register.  To respond to requirements, applicant should simply set forth in writing the required changes or statements and request that the Office enter them into the application record.  

 

The response must be signed by applicant or someone with legal authority to bind applicant (i.e., a corporate officer of a corporate applicant, the equivalent of an officer for unincorporated organizations or limited liability company applicants, a general partner of a partnership applicant, each applicant for applications with multiple individual applicants, etc.).  TMEP §§712 et seq.

 

Applicant should include the following information on all correspondence with the Office:  (1) the name and law office number of the trademark examining attorney; (2) the serial number of this application; (3) the mailing date of this Office action; and, (4) applicant's telephone number.  37 C.F.R. §2.194(b)(1); TMEP §302.03(a).

 

To expedite prosecution of this application, applicant is encouraged to file its response to this Office action through the Trademark Electronic Application System (TEAS), available at http://www.gov.uspto.report/teas/index.html.

 

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.

 

 

 

/Kevin M. Dinallo/

Trademark Examining Attorney

United States Patent & Trademark Office

Law Office 107

571-272-9731

 

 

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 Office’s Response to Office action 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.