UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

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

 

 

 

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: 8/12/2012

 

The statement of use 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(a), 2.65(a); TMEP §§711, 718.03.

 

Mark Differs on Drawing and Specimen

 

The mark on the specimen disagrees with the mark on the drawing.  In this case, the specimen displays the mark as SILVERSPRING, while the drawing shows the mark as SILVER SPRING, two distinct words..

 

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 drawing of the mark that agrees with the mark on the specimen but does not materially alter the original mark.  See 37 C.F.R. §2.72(b); TMEP §§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.; or

 

(2)  A substitute specimen showing use in commerce of the mark 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 §§807.12(a), 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); 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).

 

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

 

Amendment of Identification

 

The identification of goods and/or services in the statement of use is unacceptable because it designates goods and/or services that are broader in scope than the identification that was set forth in the application at the time of filing or as expressly amended.  While an application may be amended to clarify or limit the identification, additions that broaden the identification are not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07. 

 

The following goods and/or services are identified in the original application or in the application as amended:  “electric utility meters, namely, gas meters, electric meters, and water meters.” 

 

The following similar but more broadly described goods and/or services are identified in the statement of use:  “electric utility meters.”

 

The wording after “namely” narrowed the ID to specific devices, where the identification as now written is presumably broader-not restricted to those four items.

 

Applicant would either need to amend the identification of goods and/or services in the statement of use to conform to the current identification, or delete the term “electric utility meters” as well. 

 

If the applicant has any questions or needs assistance regarding this action, please telephone the assigned examining attorney.

 

 

 

/Frank J Lattuca/

Trademark Examining Attorney

Law Office 109

Tel: (571) 270-1518

Email: Frank.Lattuca@uspto.gov

 

TO RESPOND TO THIS LETTER:  Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  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.  For questions about the Office action itself, please contact the assigned trademark examining attorney.  E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

 

All informal e-mail communications relevant to this application will be placed in the official application record.

 

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 8/12/2012 FOR

SERIAL NO. 77853677

 

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 8/12/2012 (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.