Offc Action Outgoing

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:

 

This application has been revived.

 

This Office action is in response to the Statement of Use filed on February 16, 2010.

 

Mark Differs on Drawing and Specimen-not material

The mark on the specimen disagrees with the mark on the drawing both in color and in placement of the wording and designs.  In this case, (1) the specimen submitted with the statement of use shows the mark with the right side candy in tan with the yellow word "DOVE" and a light tan ribbon design. Below the candies is a ribbon running diagonally across appearing in tan and light tan with yellow trim.  However, the drawing shows the mark as having the right candy in red with the yellow word "DOVE" and a light red ribbon design. Below the candies is a ribbon running diagonally across appearing in red and light red with yellow trim.  Note that the color claim and color location statement also match the drawing and not the specimen of use and (2) the placement of the wording and design differ because the specimen shows DOVE above the candies and ribbon in a vertical manner whereas the drawing shows DOVE to the left of the candies/ribbon design in a horizontal manner.

A statement of use must include a specimen showing the applied-for mark in use in commerce for each class of goods and/or services specified in the statement of use.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.56(a), 2.88(b)(2); TMEP §§904, 1109.09(b).  The mark on the drawing must be a substantially exact representation of the mark as used on the specimen.  37 C.F.R. §2.51(b); TMEP §807.12(a); see 37 C.F.R. §2.72(b)(1).  In addition, the drawing of the mark can be amended only if the amendment does not materially alter the mark as originally filed.  37 C.F.R. §2.72(a)(2), (b)(2); see TMEP §§807.12(a), 807.14 et seq. 

 

Therefore, applicant must submit one of the following:

 

(1)  A new color drawing of the mark that agrees with the colors and placement of the mark on the specimen and does not materially alter the original mark.  See 37 C.F.R. §2.72(b); TMEP §§807.07(d)(i), 807.13(a), 807.14 et seq.  Amending the drawing to agree with the specimen would not be considered a material alteration of the mark in this case.  However, applicant must also provide a statement listing all the colors that are claimed as a feature of the mark and a statement describing the literal and design elements of the mark that specifies where all the colors appear in those elements.  See 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §807.07(d)(i).  If black, white and/or gray are not being claimed as a color feature of the mark, applicant must state that the colors black, white and/or gray represent background, outlining, shading and/or transparent areas and are not part of the mark.  TMEP §807.07(d).  Generic color names must be used in the color claim and mark description, e.g., magenta, yellow, turquoise.  TMEP §807.07(a)(i)-(a)(ii).;

 

(2)  A new black and white drawing of the mark showing proper placement of the mark, with a statement authorizing the deletion of any color claim or color description.  Amending the drawing to agree with the specimen would not be considered a material alteration of the mark in this case.  See TMEP §807.07(a)(i), (d)(i).; or

 

(3)  A substitute specimen showing use in commerce of the mark in the colors and with the placement depicted 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 prior to the expiration of the deadline for filing the statement of use.”  See 37 C.F.R. §§2.59(b)(2), 2.193(e)(1); TMEP §§807.07(d)(i), 904.05.  If submitting a substitute specimen requires an amendment to the dates of use, applicant must also verify the amended dates.  37 C.F.R. §2.71(c); TMEP §904.05.

 

Pending receipt of a proper response, registration is refused because the specimen does not show the applied-for mark in use in commerce as a trademark and/or service mark.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.56(a), 2.88(b)(2); TMEP §§904, 904.07(a). Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

 

 

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

 

Declaration Information

 

To submit a verified substitute specimen online via the Trademark Electronic Application System (TEAS), applicant should do the following:  (1) answer “yes” to the TEAS response form wizard question to “submit a new or substitute specimen;” (2) attach a jpg or pdf file of the substitute specimen; (3) select the statement that “The substitute specimen(s) was in use in commerce prior to the expiration of the deadline for filing the statement of use.”; and (4) enter manually his/her electronic signature and date after the declaration at the end of the TEAS response form.  See TMEP §§611.01(c), 804.01(b).  Please note that these steps appear on different pages of the TEAS response form. 

 

If applicant experiences difficulty in submitting the required substitute specimen, supporting statement and/or declaration, please e-mail TEAS@uspto.gov for technical assistance regarding the TEAS response form.

 

 

If applicant has questions about the application or this Office action, please contact the assigned trademark examining attorney at the telephone number below.

 

 

 

 

Rebecca L. Gilbert

/Rebecca L. Gilbert/

Law Office 103

571-272-9431

 

 

 

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.