To: | Xerox Corporation (marcia.wilkins@xerox.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 77364559 - XEROX - N/A |
Sent: | 7/29/2009 7:25:40 AM |
Sent As: | ECOM106@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 77/364559
MARK: XEROX
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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: Xerox Corporation
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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: 7/29/2009
The assigned examining attorney has reviewed the statement of use filed on 7-14-09 and has determined the following.
DRAWING DOES NOT MATCH SPECIMENS
The drawing displays the mark as claiming the color red, and appearing in red. However, this differs from the display of the mark on the specimen, where it appears as black and white only. The applicant cannot amend the drawing to conform to the display on the specimen because the character of the mark would be materially altered. 37 C.F.R. Section 2.72(a); TMEP section 807.14(a).
Therefore, the applicant must submit a substitute specimen that shows use of the mark as it appears on the drawing. 37 C.F.R. Section 2.51; TMEP section 807.14. The applicant must verify, with an affidavit or a declaration under 37 C.F.R. Section 2.20, that the substitute specimen was in use in commerce at least as early as the filing date of the application. 37 C.F.R. Sections 2.59(a) and 2.72(a); TMEP section 905.10
See also TMEP section 904.02 (c) (ii):
If color is a feature of the mark, or if the mark consists solely of color, the specimen must show use of the color. 37 C.F.R. §2.51; If the applicant submits a specimen that is not in color or not in the appropriate color, the examining attorney will require the applicant to file a substitute specimen that shows use of the appropriate color(s). See regarding substitute specimens.
The statement supporting use of the substitute specimen must read as follows:
The substitute specimen was in use in commerce at least as early as the filing date of the application.
The applicant must sign this statement either in affidavit form or with a declaration under 37 C.F.R. Section 2.20.
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)
RESPONSE GUIDELINES
Please note, there is no required format or form for responding to this Office action. To expedite prosecution of this application, applicant is encouraged to 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.
When responding to this Office action, applicant must make sure to respond to each refusal and requirement raised. If there is a refusal to register the proposed mark, then 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. If there are other requirements, then applicant should simply set forth in writing the required changes or statements and request that the Office enter them into the application record. Applicant must also sign and date its response.
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.
/lindamickleburgh/
Linda Mickleburgh
U.S.P.T.O. Examining Attorney
Law Office 106
(571)272-9198
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.