UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 77/773553
MARK: WESTEK IN TOUCH WITH TECHNOLOGY
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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: American Tack & Hardware, Co., Inc.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.
The undersigned examining attorney has reviewed the above-referenced application, in accordance with section 2.61 of the Trademark Rules of Practice, 37 C.F.R. § 2.61 (2008), and has determined the following:
The Office records have been searched and no similar registered or pending mark has been found that would bar registration under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d) (2006). Trademark Manual of Examination Procedure § 704.02 (6th ed. 2009).
SPECIMEN DOES NOT SHOW USE OF MARK WITH IDENTIFIED INTERNATIONAL CLASS 9 GOODS
Applicant has provided an acceptable specimen for International Class 11.
Applicant has not provided an acceptable specimen to demonstrate proper trademark use in commerce for use on the applied‑for goods classified by Applicant in International Class 9, specifically, as generally identified by Applicant as “Dusk to Dawn Light Controls, Programmable Light Controls, Remote Frequency Light Controls, Lamp Dimmers, Lamp Timers, Appliance Timers, Outdoor Timers,” packaging, or as part of a point-of-sale display. Under Section 1(a) and 45 of the Trademark Act and under Rule 2.56, a specimen showing use of the mark as actually used on the identified goods, packaging or at a point‑of‑sale display is required in an application based on use of the mark in commerce. 15 U.S.C. §§ 1051(a), 1127; 37 C.F.R. §§ 2.34(a)(1)(iv), 2.56; TMEP §§ 904, 904.07(a).
Specifically, Section 45 requires use “on the goods or their containers or the displays associated therewith or on tags or labels affixed thereto.” 15 U.S.C. § 1127; see 37 C.F.R. § 2.56(b)(1); TMEP § 904.03.
In support of trademark usage of the recited goods in International Class 9, Applicant has submitted one JPEG image that Applicant describes as “packaging.” The specimen packaging shows the mark in the upper right portion, and the wording indicates that the packaging is for a 40‑Watt, sixteen‑inch “Adjustable Under-Cabinet Task Light,” which is a lighting fixture classified in International Class 11.
Consequently, the specimen is unacceptable to show proper use for International Class 9 goods.
Therefore, Applicant must submit the following:
(1) A substitute specimen showing the mark as it is used in commerce for the International Class 11 goods specified in the application; and
(2) A statement that the substitute specimen was in use in commerce at least as early as the filing date of the application, verified with an affidavit or a declaration under 37 C.F.R. § 2.20.
37 C.F.R. § 2.59(a); see TMEP § 904.05.
If submitting a substitute specimen requires an amendment to the dates of use, Applicant must also verify the amended dates, in accordance with Rule 2.20. 37 C.F.R. § 2.71(c).
Examples of specimens for goods are tags, labels, instruction manuals, containers, and photographs that show the mark on the goods or packaging, or displays associated with the goods at their point of sale. TMEP § 904.03.
Applicant is strongly urged to submit the specimen electronically. If Applicant submits an online response, please note that the specimen must be a digitized image submitted in either JPEG or PDF format. 37 C.F.R. § 2.56(d)(4); TMEP § 904.02.
If Applicant cannot comply with the SPECIMEN requirement for the Section 1(a) basis asserted, Applicant may amend the Section 1(a) filing basis (i.e., use in commerce) to Section 1(b) (i.e., intent to use basis), for which no specimen is immediately required. See TMEP § 806.03(c). 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 § 1103.
In order to amend to Section 1(b), the following statement is required:
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). This statement must be verified with an affidavit or a signed declaration under 37 C.F.R. § 2.20. 37 C.F.R. §§ 2.34(a), 2.35(b)(1); TMEP § 806.01(b).
Pending receipt of a proper response, registration is refused because the specimen does not show the proposed mark in use in commerce as a trademark for the identified goods. 15 U.S.C. §§ 1051, 1127; 37 C.F.R. §§ 2.34(a)(1)(iv), 2.56; TMEP §§ 904, 904.07(a).
The listed goods in International Class 11 are acceptable as submitted.
Certain identified goods in International Class 9 are unacceptable as indefinite. TMEP §§ 1402.01, 1402.03(a). Applicant must specify that the listed light controls are electric and the dimmers are electric light dimmers, to ensure proper classification and examination, as suggested by the attached listings and below. Id. See attached listing from the Trademark Manual of Acceptable Identifications of Goods and Services for suggestions of acceptable, definite identifications and classifications with respect to certain of the identified goods.
Applicant may adopt the following framework to identify the recited goods, if appropriate:
International Class 9—Dusk to Dawn ELECTRIC Light Controls, Programmable ELECTRIC Light Controls, Remote Frequency ELECTRIC Light Controls, Lamp Dimmers, NAMELY, ELECTRIC LIGHT DIMMERS, Lamp Timers, Appliance Timers, Outdoor Timers.
TMEP §§ 1402.01, 1402.03.
Please note that while the identification of the above-identified goods may be amended to clarify or limit the listed goods, adding goods and services or broadening the scope of the listed goods is not permitted. 37 C.F.R. § 2.71(a); TMEP § 1402.06. Therefore, Applicant may not amend any identification to include goods or services that are not within the scope set forth in the present identification.
For further assistance with classification and identification of goods and services in trademark applications, the searchable Trademark Manual of Acceptable Identifications of Goods and Services is available online at http://tess2.gov.uspto.report/netahtml/tidm.html.
PARTIAL ABANDONMENT (ADVISORY)
If Applicant should fail to respond to this Office Action within the six-month period for response, then International Class 9 will be deleted from the application by Examiner’s Amendment.
The application will proceed only for registration of the mark in connection with the goods classified in International Class 11. 37 C.F.R. § 2.65(a).
Please contact the undersigned attorney with any questions.
Sincerely,
/Judy Helfman/
Judith M. Helfman
Attorney at Law
USPTO - Trademarks
Law Office 114
(571) 272-5892 direct line
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.