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: 8/12/2008

 

THIS IS A FINAL ACTION.

 

This Office action is in response to applicant’s communication filed on 07/21/2008. Applicant submitted (1) a new drawing, (2) arguments and evidence in favor of withdrawing the Trademark Act Section 2(d) refusals, and (3) submitted arguments and evidence in favor of withdrawing the substitute specimen requirement.

 

The following requirement has been satisfied:  New drawing of the mark.  TMEP §§713.02, 714.04. Applicant’s assertion of unity of control and supporting evidence is accepted, and thus, the Trademark Act Section 2(d), refusals regarding U.S. Registration Nos. 0754929, 2529586, and 339051 are hereby withdrawn.

 

The following requirements are now made FINAL:  Substitute specimen.  See37 C.F.R. §2.64(a).

 

FINAL: Mark Differs on Drawing and Specimen

The specimen was refused previously because the mark on the drawing page does not agree with the mark as it appears on the specimen.  In this case, the drawing displays the mark as CETAPHIL and design, while the specimen shows the mark as CETAPHIL and design, plus the slogan EVERY AGE. EVERY STAGE. EVERY DAY below CETAPHIL and carried within the design. 

 

Applicant contends that original specimen with the additional slogan should be accepted because (1) EVERY AGE. EVERY STAGE. EVERY DAY “is an element of the label which presents a separate and distinct commercial impression apart from any other matter with which the mark is or will be used on the specimen,” (2) the slogan is severable from CETAPHIL, and (3) CETAPHIL is a separately recognized umbrella mark of the applicant.

 

The examining attorney respectfully disagrees. First, the slogan EVERY AGE. EVERY STAGE. EVERY DAY is not a separable element that creates a distinct commercial impression apart from CETAPHIL because (1) the elements CETAPHIL and EVERY AGE. EVERY STAGE. EVERY DAY slogan on the specimen label is contained within the inner design in extremely close proximity; in fact, the P in CETAPHIL dissects the slogan between EVERY STAGE and EVERY DAY. Thus, the commercial impression created by the specimen is that the term CETAPHIL and the slogan EVERY AGE. EVERY STAGE. EVERY DAY is inextricably linked. In addition to the extremely close proximity and placement within the label design, the slogan is part and parcel of the mark on the specimen because it explains suggestive usage of CETAPHIL. The slogan does not stand apart from CETAPHIL by physical separation or unrelatedness of the meaning of the slogan. The fact that the slogan is in a smaller font and color than CETAPHIL only serves to show the slogan is meant as an explanatory modifier of the use of CETAHPIL. Thus, the mark and slogan are not separable elements in this case.

 

Second, the argument that CETAPHIL is a separately recognized umbrella mark owned by the applicant is not persuasive because it has no bearing on the specimen issue in this case. Prior decisions and actions of other trademark examining attorneys in registering different marks have little evidentiary value and are not binding upon the Office.  TMEP §1207.01(d)(vi).  Each case is decided on its own facts, and each mark stands on its own merits.  See AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d 1403, 1406, 177 USPQ 268, 269 (C.C.P.A. 1973); In re Int’l Taste, Inc., 53 USPQ2d 1604, 1606 (TTAB 2000); In re Sunmarks, Inc., 32 USPQ2d 1470, 1472 (TTAB 1994).

 

Accordingly, 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).  However, applicant may not submit an amended drawing to conform to the display on the specimen because the character of the mark would be materially altered; in other words, the mark on the specimen creates a different commercial impression from the mark on the drawing.  37 C.F.R. §2.72(a); TMEP §§807.12, 807.12(a), 807.14 et seq., 904.05. 

 

Therefore, applicant must submit the following:

 

(1)   A substitute specimen that shows the mark that appears on the drawing; 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 at least as early as the filing date of the application.”  37 C.F.R. §2.59(a); 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).

 

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), 2.35(b)(1); TMEP §806.01(b).

 

 

Applicant’s Response

If applicant does not respond within six months of the mailing date of this final Office action, the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond to this final Office action by: 

 

(1)     Submitting a response that fully satisfies all outstanding requirements, if feasible; and/or

 

(2)     Filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class.

 

37 C.F.R. §§2.6(a)(18), 2.64(a); TBMP ch. 1200; TMEP §714.04.

 

In certain rare circumstances, a petition to the Director may be filed pursuant to 37 C.F.R. §2.63(b)(2) to review a final Office action that is limited to procedural issues.  37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters).  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

 

 

 

 

/Anthony M. Rinker/

Trademark Examining Attorney

Law Office 102

571-272-5491

 

 

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.

 

 

 

 

 

                                                                

IMPORTANT NOTICE

USPTO OFFICE ACTION HAS ISSUED ON 8/12/2008 FOR

APPLICATION SERIAL NO. 77378145

 

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=77378145&doc_type=OOA&mail_date=20080812 (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 8/12/2008.

 

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.