Offc Action Outgoing

The statement of use has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62, 2.65(a); TMEP §§711, 718.03.

Specimen Refused – Not Acceptable:

The specimen is not acceptable to show trademark use in a display associated with the goods because, although identified as a “screen shot” of a webpage, it does not show the mark in close proximity to a picture of the goods and the necessary ordering information or a weblink for ordering the goods. Trademark Act Section 45, 15 U.S.C. §1127; 37 C.F.R. §2.56(b)(1); TMEP §§904.03(h)-(i).

A printed or web catalog, web page, or similar specimen is acceptable to show trademark use as a display associated with the goods only if it includes (1) a picture of the relevant goods, (2) the mark appearing sufficiently near the picture of the goods so as to associate the mark with the goods, and (3) information necessary to order the goods (e.g., sales form, price list, instructions for ordering, etc.) or a visible weblink to order the goods. Lands’ End, Inc. v. Manbeck, 797 F. Supp. 511, 514, 24 USPQ2d 1314, 1316 (E.D. Va. 1992); In re Dell Inc., 71 USPQ2d 1725, 1727-1729 (TTAB 2004); In re MediaShare Corp., 43 USPQ2d 1304 (TTAB 1997); TMEP §§904.03(h) and (i).

A statement of use must include a specimen showing the applied-for mark in use in commerce for each class of goods in the statement of use. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.56, 2.88(b)(2); TMEP §§904, 904.07(a), 1109.09(b).

Applicant may respond to this refusal by submitting the following:

(1) A substitute specimen showing the mark in use in commerce for the goods specified in the statement of use; and

(2) 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 prior to the expiration of the time allowed applicant for filing a statement of use.” 37 C.F.R. §2.59(b)(2); 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).

Examples of acceptable specimens for goods are tags, labels, instruction manuals, containers, or photographs that show the mark on the goods or packaging. TMEP §§904.03 et seq.

Pending a proper response, registration is refused because the specimen does not show the applied-for mark in use in commerce as a trademark. 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.56, 2.88; TMEP §§904, 904.07(a), 1109.09(b).

Applicant may not withdraw the statement of use. 37 C.F.R. §2.88(g); TMEP §1109.17.

Sample Declaration for a Substitute Specimen:

The following is a sample declaration under 37 C.F.R. §2.20 with a supporting statement for a substitute specimen:

The undersigned being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements and the like may jeopardize the validity of the application or document or any registration resulting there from, declares that the substitute specimen was in use in commerce prior to the expiration of the time allowed applicant for filing a statement of use; 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)

Persons Who Can Sign Verifications/Declarations:

The following persons are properly authorized to sign a verification or declaration on behalf of an applicant:

(1) A person with legal authority to bind the applicant (e.g., a corporate officer of a corporate applicant, the equivalent of an officer for unincorporated organizations or limited liability companies, a general partner of a partnership applicant, all joint venturers of a joint venture applicant);

(1) A person with firsthand knowledge of the facts and actual or implied authority to act on behalf of the applicant; or

(2) An attorney as defined in 37 C.F.R. §11.1 who has an actual written or verbal power of attorney or an implied power of attorney from the applicant (and is an attorney in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and other federal territories and possessions of the United States; or Canadian agents/attorneys who represent applicants residing in Canada and who have received reciprocal recognition by the USPTO under 37 C.F.R. §11.14(c)).

37 C.F.R. §2.33(a); TMEP §804.04.

Electronic Signature:

To properly “sign” a form online in the Trademark Electronic Application System (TEAS), applicant can do one of the following:

(1) Enter in the signature block any combination of letters, numbers, spaces and/or punctuation marks that the filer has adopted as a signature, placed between two forward slash (/) symbols (e.g., /john doe/);

(2) E-mail the completed form from within TEAS to a second party for his/her electronic signature, which will then be automatically returned to the original preparer for submission with the form; or

(3) Fill out the form online, print it in text format, and mail or fax it to the signatory who will sign the printed form in the traditional pen-and-ink manner. The signature portion, along with a declaration if required, is then scanned to create a jpg or pdf image file and attached to the form for electronic submission.

See 37 C.F.R. §§2.33(d), 2.193(c)(1)(iii); TMEP §804.05.

For each method, applicant must either personally sign or manually enter his/her electronic signature and provide the date of “signing.” TMEP §804.05; see TMEP §804.01(b). Applicant should also set forth the signatory’s name and position beneath the signature. TMEP §§712 et seq., 804.05.

Electronically Submitted Specimen:

If applicant submits a response via electronic means, the substitute specimen must be submitted in jpg or pdf format. 37 C.F.R. §2.56(d)(4); TMEP §904.02(a).

TEAS Response Suggested:

To expedite prosecution of this application, applicant is encouraged to file its response to this Office action online via the Trademark Electronic Application System (TEAS), which is 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.

James W. MacFarlane

/James W. MacFarlane/

Trademark Examining Attorney

Law Office 104

Phone: 571-270-1512

Fax: 571-270-2512

RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the form at http://www.gov.uspto.report/teas/eTEASpageD.htm, waiting 48-72 hours if applicant received notification of the Office action via e-mail. For technical assistance with the form, please e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned examining attorney. Do not respond to this Office action by e-mail; 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.