To: | Diabetic Supply of Suncoast (iplawyer@kingofip.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 77901920 - ADVOCATE - PharmaSupply |
Sent: | 10/25/2010 10:18:30 PM |
Sent As: | ECOM108@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
APPLICATION SERIAL NO. 77901920
MARK: ADVOCATE
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/teas/eTEASpageD.htm
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APPLICANT: Diabetic Supply of Suncoast
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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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: 10/25/2010
THIS IS A FINAL OFFICE ACTION
TEAS PLUS APPLICANTS MUST SUBMIT DOCUMENTS ELECTRONICALLY OR SUBMIT FEE: Applicants who filed their application online using the reduced-fee TEAS Plus application must continue to submit certain documents online using TEAS, including responses to Office actions. See 37 C.F.R. §2.23(a)(1). For a complete list of these documents, see TMEP §819.02(b). In addition, such applicants must accept correspondence from the Office via e-mail throughout the examination process and must maintain a valid e-mail address. 37 C.F.R. §2.23(a)(2); TMEP §§819, 819.02(a). TEAS Plus applicants who do not meet these requirements must submit an additional fee of $50 per international class of goods and/or services. 37 C.F.R. §2.6(a)(1)(iv); TMEP §819.04. In appropriate situations and where all issues can be resolved by amendment, responding by telephone to authorize an examiner’s amendment will not incur this additional fee.
This Office action is in response to applicant’s communication filed on October 3, 2010.
The likelihood of confusion refusals are withdrawn, as the claim of ownership of the cited registrations is accepted.
The substitute drawing and the color claim are accepted.
Requirement for Acceptable Specimen - Maintained and Made FINAL
The mark as depicted on the specimen differs from the mark as depicted on the drawing. The mark appears on the drawing with the design elements of a drop of blood and a sideways triangle. In contrast, the mark appears on the specimen without these design elements.
In this case, amending the mark as depicted on the drawing to the mark as depicted on the specimen would be a material alteration. Therefore, applicant may NOT submit a substitute drawing amending the mark to match the mark as depicted on the specimen.
Applicant must submit a substitute specimen instead of a substitute drawing as discussed below.
(1) A substitute specimen showing the mark in use in commerce for each class of goods specified in the application; and
(2) 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 at least as early as the filing date of the application.” 37 C.F.R. §2.59(a); TMEP §904.05; see 37 C.F.R. §2.193(e)(1). 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.
Examples of specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale. See TMEP §§904.03 et seq.
If applicant cannot satisfy the above requirements, applicant may amend the application from a use in commerce basis under Section 1(a) to an intent to use basis under Section 1(b), for which no specimen is required. See TMEP §806.03(c). However, if applicant amends the basis to Section 1(b), registration will not be granted until applicant later amends the application back to use in commerce by filing an acceptable allegation of use with a proper specimen. See 15 U.S.C. §1051(c), (d); 37 C.F.R. §§2.76, 2.88; TMEP §1103.
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 listed in the application as of the filing date of the application.” 37 C.F.R. §2.34(a)(2); TMEP §806.01(b); see 15 U.S.C. §1051(b); 37 C.F.R. §§2.35(b)(1), 2.193(e)(1).
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. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).
The following is a sample declaration under 37 C.F.R. §2.20 with a supporting statement for an amendment of the filing basis from a Section 1(a) basis to a Section 1(b) basis:
_____________________________
(Signature)
_____________________________
(Print or Type Name and Position)
_____________________________
(Date)
Requirement for a Definite Description of the Mark Statement - Maintained and Made FINAL
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 to describe the colors in the mark, e.g., magenta, yellow, turquoise. TMEP §807.07(a)(i)-(a)(ii).
The element of a sideways triangle appearing in the color burgundy is not described in the description of the mark statement.
Therefore, applicant must provide a description of the literal and design elements in the mark that specifies where all the colors appear in those elements. The following description is suggested, if accurate:
The mark consists of the wording "ADVOCATE" with a design of a cone in the opening of the letter "V". To the left of the wording “ADVOCATE” appears a triangle pointing sideways and in the color burgundy. To the right of the wording "ADVOCATE" appears a drop of blood in the color burgundy and the color white appearing in the middle of the drop. The rest of the drawing, namely, the blood glucose meter strip, is not part of the mark, is merely to show placement of the mark, and is depicted in dotted lines.
TMEP §807.07(a)(ii).
Examiner’s Amendment Recommended – If Applicable
Examiner’s Amendments cannot be issued for partial amendments. However, if all of the outstanding issues can be resolved through an Examiner’s Amendment, the applicant is encouraged to respond to this Office Action by amending the application in a telephone call with the examining attorney to expedite the processing of the application. Generally, only the submission of arguments to overcome a substantive refusal or an informal requirement, a requirement for the submission of specimens, a particular document or declaration, or the payment of a fee cannot be handled over the telephone.
Responding to Office Action
15 U.S.C. §§1051 et seq.; 37 C.F.R. Parts 2, 3, 6, 7, 10, and 11; see TMEP intro., §§101, 107, 110.
Official USPTO letters and notices sent to applicants generally refer to one or more of these legal resources. Both the Trademark Act and the Trademark Rules of Practice can be viewed online at the Trademarks’ Home Page at http://www.gov.uspto.report/trademarks/index.jsp by clicking on “Laws & Regulations” on the left side of the screen. The TMEP is also available via the Home Page by clicking on “Manuals, Guides, Official Gazette” on the left side of the screen. Trademark Trial and Appeal Board decisions and the TBMP can be found at the website at http://www.gov.uspto.report/trademarks/process/appeal/index.jsp.
Please note that applicant must explicitly address all issues raised in this Office Action. If the issues are substantive refusals, the applicant may respond with arguments and evidence to overcome the refusal. To respond to requirements/informalities the applicant must specifically request that changes to the record be made.
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.
If applicant responds on paper via regular mail, applicant should include the following information on all correspondence with the Office: (1) the name and law office number of the trademark examining attorney, (2) the serial number and filing date of the application, (3) the date of issuance 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 Trademark Applications and Registrations Retrieval (TARR) database on the USPTO website at http://tarr.uspto.gov provides detailed, up to the minute information about the status and prosecution history of trademark/service mark applications and registrations. To access the TARR database, applicant will need to provide an application serial number or registration number. The TARR database is available 24 hours a day, 7 days a week.
/Michael A. Wiener/
Trademark Examining Attorney
Law Office 108
Phone: (571) 272-8836
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.