| To: | Leader Drugstores, Inc. (trademarks@bricker.com) |
| Subject: | TRADEMARK APPLICATION NO. 77568424 - LEADER - 009252 14283 |
| Sent: | 12/19/2008 9:15:57 PM |
| Sent As: | ECOM112@USPTO.GOV |
| Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 77/568424
MARK: LEADER
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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: Leader Drugstores, Inc.
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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: 12/19/2008
The referenced application 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.
Search
Applicant must respond to the requirement(s) set forth below.
Drawing
Description of the Mark
The mark consists of concentric oblong designs containing the term “LEADER.”
Identification of Goods and Services
Class 3: “House Mark for a full line of cosmetics, non-medicated toiletries and beauty preparations.”
Class 35: “Third party pharmaceutical prescription plan services offered to member drug stores, namely, advertising, marketing, business consulting and purchasing pharmaceuticals.”
Applicant may adopt all or part of the following identification, if accurate:
Class 3: “House mark for a full line of cosmetics, non-medicated toiletries and beauty preparations.”
Class 5: “House mark for a full line of pharmaceutical preparations.”
Class 35: “Retail pharmacy services; third party pharmaceutical prescription plan services offered to member drug stores, namely, advertising, marketing, business consulting and purchasing pharmaceuticals; business consultation in the field of pharmacy.”
Class 36: “Administration of pharmaceutical prescription benefit plans offered to employers.”
For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.
Classification
Multiple Class Application
(1) Applicant must list the goods/services by international class;
(2) Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid (current fee information should be confirmed at http://www.uspto.gov); and
(3) For each additional international class of goods and/or services, applicant must submit:
a. Dates of first use of the mark anywhere and dates of first use of the mark in commerce, or a statement that the dates of use in the initial application apply to that class; and the dates of use, both anywhere and in commerce, must be at least as early as the filing date of the application;
b. One specimen showing use of the mark for each class of goods and/or services; and the specimen must have been in use in commerce at least as early as the filing date of the application. If a single specimen supports multiple classes, applicant should indicate which classes the specimen supports rather than providing multiple copies of the same specimen;
c. A statement that “the specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application;” and
d. Verification of the statements in 3(a) and 3(c) (above) in an affidavit or a signed declaration under 37 C.F.R. §§2.20, 2.33. Verification is not required where (1) the dates of use for the added class are stated to be the same as the dates of use specified in the initial application, and (2) the original specimens are acceptable for the added class(es).
See 37 C.F.R. §§2.34(a)(1), 2.71(c), 2.86(a); TMEP §§1403.01, 1403.02(c).
The specimen(s) of record is acceptable for International Class 35 only.
House Mark
Therefore, applicant must provide evidence that shows use of the mark as a house mark. Such evidence may consist of product catalogs or similar evidence showing broad use of the mark. TMEP §1402.03(b); see 37 C.F.R. §2.61(b).
If applicant is unable to provide such evidence, applicant must amend the identification to delete “house mark for” and specify the common commercial or generic name for each item. See TMEP §§1402.01, 1402.03(b).
Full Line
Therefore, applicant must provide evidence that shows use of the mark for a full line of products. Such evidence may consist of product catalogs or similar evidence showing broad use of the mark for a majority of the goods in the “full line.” TMEP §1402.03(c); see 37 C.F.R. §2.61(b). Evidence showing use of the mark on only three products is not considered sufficient to show use for a “full line” of products. See In re Astra Merck Inc., 50 USPQ2d 1216 (TTAB 1999).
If applicant is unable to provide such evidence, applicant must amend the identification to delete “full line of” and specify the common commercial or generic name for each item. See TMEP §§1402.01, 1402.03(c).
Specimen – International Class 3
In this case, the specimen shows antibiotic ointment, which is in International Class 5.
Therefore, applicant must submit the following:
(1) A substitute specimen showing use of the mark for each class of goods and/or services specified in the application; and
(2) The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “The 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).
Examples of specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the goods or packaging, or displays associated with the goods at their point of sale. TMEP §§904.03 et seq. Examples of specimens for services are signs, photographs, brochures, website printouts or advertisements that show the mark used in the sale or advertising of the services. TMEP §§1301.04 et seq.
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 §806.03(c).
Pending a proper response, registration is refused because the specimen does not show the applied-for mark in use in commerce as a trademark or service mark for the identified goods or services. 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56; TMEP §§904, 904.07(a).
Sample Declaration for 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 at least as early as the filing date of the application; 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)
Sample Declaration for Amendment to Section 1(b):
_____________________________
(Signature)
_____________________________
(Print or Type Name and Position)
_____________________________
(Date)
Prior Registrations
Applicant’s claim of ownership of U.S. Registration Nos. 1408057 and 1434421 will not be printed on any registration which may issue from this application because Office records show that the claimed registrations are expired. Only claims of ownership of live registrations are printed. 37 C.F.R. §2.36; TMEP §812.
Applicant is the owner of U.S. Registration Nos. 2351269, 3116212 and 3527296.
Response Guidelines
There is no required format or form for responding to an Office action. The Office recommends applicants 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 title “Response to Office Action” and the following information: (1) the name and law office number of the examining attorney, (2) the serial number and filing date of the application, (3) the mailing date of this Office action, (4) applicant’s name, address, telephone number and e-mail address (if applicable), and (5) the mark. 37 C.F.R. §2.194(b)(1); TMEP §302.03(a).
The response should address each refusal and/or requirement raised in the Office action. If a refusal has issued, applicant can argue against the refusal; i.e., applicant can submit arguments and evidence as to why the refusal should be withdrawn and the mark should register. To respond to requirements, applicant should set forth in writing the required changes or statements and request that the Office enter them into the application record.
The response must be personally signed or the electronic signature manually entered by applicant or someone with legal authority to bind applicant (i.e., a corporate officer of a corporate applicant, the equivalent of an officer for unincorporated organizations or limited liability company applicants, a general partner of a partnership applicant, each applicant for applications with multiple individual applicants). TMEP §§605.02, 712.
/Tara J. Pate/
Trademark Examining Attorney
Law Office 112
Phone: 571-272-4714
Fax: 571-273-9112
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.