To: | Schering-Plough HealthCare Products, Inc ETC. (trademarkus@spcorp.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 77926629 - DR. SCHOLL'S - N/A |
Sent: | 10/12/2011 7:48:15 AM |
Sent As: | ECOM113@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
APPLICATION SERIAL NO. 77926629
MARK: DR. SCHOLL'S
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CORRESPONDENT ADDRESS: 2000 Galloping Hill Road |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Schering-Plough HealthCare Products, Inc ETC.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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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: 10/12/2011
INTRODUCTION TO ADDITIONAL NON-FINAL OFFICE ACTION
After further consideration, the following additional issues have been identified in this application. Please note that the previously requirement for information has been withdrawn.
SPECIMEN-MARK DISAGREEMENT -- New Issue
An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each class of goods and/or services. 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 mark on the drawing must be a substantially exact representation of the mark on the specimen. 37 C.F.R. §2.51(a); TMEP §807.12(a); see 37 C.F.R. §2.72(a)(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); 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 of the mark on the specimen and does not materially alter the original mark. See 37 C.F.R. §2.72(a)(2); TMEP §§807.07(d)(i), 807.12(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. However, applicant must also provide a statement listing all the colors that are claimed as a feature of the mark and a statement describing the literal and design elements of the mark that specifies where all the colors appear in those elements. See 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §807.07(d)(i). 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 in the color claim and mark description, e.g., magenta, yellow, turquoise. TMEP §807.07(a)(i)-(a)(ii).;
(2) A substitute specimen showing use in commerce of the mark in the colors 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 at least as early as the filing date of the application.” See 37 C.F.R. §§2.59(a), 2.193(e)(1); TMEP §§807.07(d)(i), 904.02(c)(ii). 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.
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. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).
REQUIREMENT FOR AN ACCURATE MARK DESCRIPTION – Additional Issue Located
Therefore, applicant must provide a more accurate description of the applied-for mark. The following is suggested:
The mark consists of the wording “DR. SCHOLL’S” presented in dark blue stylized font within a dark blue oval carrier. The wording and design element are situated on a light blue and purple elongated and irregular oval background. The background is light blue. An irregular purple oval shape with an extended right side is superimposed over the lower portion of the mark. The bottom center of this purple portion includes a cut-out which reveals a light blue oval shape. The matter shown in broken lines is not part of the mark and serves only to show the position of placement of the mark.
RESPONSE
If applicant has questions regarding this Office Action, please telephone or e-mail the assigned trademark examining attorney. All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response. See 37 C.F.R. §2.191; TMEP §§709.04-.05. Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office Action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights. See TMEP §§705.02, 709.06.
/N. Gretchen Ulrich/
N. Gretchen Ulrich
Trademark Attorney-Advisor
Law Office 113
Phone: (571) 272-1951
gretchen.ulrich@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.