UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

FINAL OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER 

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.

 

ISSUE/MAILING DATE: 11/8/2010

 

THIS IS A FINAL ACTION.

 

 

This Office action is in response to applicant’s communication filed on October 13, 2010.

 

The following requirements are now made FINAL:  mark differs on drawing and specimen.  See37 C.F.R. §2.64(a).

 

Mark Differs on Drawing and Specimen-not material

As discussed with the attorney of record, the mark on the specimen disagrees with the mark on both the original and the substitute 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 original 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.   The substitute drawing shows the mark as having the right candy in green with the dark green word "DOVE" and a light green ribbon design. Below the candies is a ribbon running diagonally across appearing in green and light green with dark green trim. Below that is a horizontal yellow line. Note also that 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.  NOTE that the present amended color description/claim appear to match the colors in the specimen of use  See 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §807.07(d)(i).; 

(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.  In this case, applicant would need to amend the color claim/description to match the drawing of record.  The drawing, color claim, color location description and specimen must all match.  37 C.F.R. §2.71(c); TMEP §904.05.

 

Accordingly, the refusal of registration because the specimen does not show the applied-for mark in use in commerce as a trademark and/or service mark is continued and made final.  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).  Note that 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.

 

Options-Proper response to final office action

If applicant does not respond within six months of the date of issuance 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).

 

 

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

 

 

 

TO RESPOND TO THIS LETTER:  Use the Trademark Electronic Application System (TEAS) response form at http://teasroa.gov.uspto.report/roa/.  Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the application.  For technical assistance with online forms, e-mail TEAS@uspto.gov.

 

WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants).  If an applicant is represented by an attorney, the attorney must sign the response. 

 

PERIODICALLY CHECK THE STATUS OF THE APPLICATION:  To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using Trademark Applications and Registrations Retrieval (TARR) at http://tarr.gov.uspto.report/.  Please keep a copy of the complete TARR screen.  If TARR shows no change for more than six months, call 1-800-786-9199.  For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

 

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.gov.uspto.report/teas/eTEASpageE.htm.

 

 

 

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION HAS ISSUED ON 11/8/2010 FOR

SERIAL NO. 77407715

 

Please follow the instructions below to continue the prosecution of your application:

 

 

TO READ OFFICE ACTION: Click on this link or go to http://portal.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 e-mail notification.

 

RESPONSE IS REQUIRED: You should carefully review the Office action to determine (1) how to respond; and (2) the applicable response time period. Your response deadline will be calculated from 11/8/2010 (or sooner if specified in the office action).

 

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.

 

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

 

Failure to file the required response by the applicable deadline will result in the ABANDONMENT of your application.