Offc Action Outgoing

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:

The applicant has submitted the foreign registration certificate. Prosecution of this application is, therefore, resumed.

The foreign registration certificate is of record.

IDENTIFICATION OF GOODS

The following wording in the identification of goods in the U.S. application is unacceptable because it exceeds the scope of the goods and/or services in the foreign application or registration: “video projectors” and “projectors.” See 37 C.F.R. §2.32(a)(6); TMEP §1012. While the foreign registration certificate references both ‘project screens and mounts,’ there does not appear to be any reference to ‘video projectors’ [Class 9 in the U.S. application] or ‘projectors’ [Class 35 in the U.S. application].

Therefore, applicant must satisfy one of the following:

(1) Amend the identification of goods and/or services in the U.S. application to correspond to the goods and/or services identified in the foreign application or registration, ensuring that all goods and/or services beyond the scope of the foreign application or registration are deleted from the U.S. application; or

(2) Delete the Trademark Act Section 44 basis for the goods and/or services beyond the scope of the foreign application or registration and substitute a basis under Section 1(a) or 1(b) for those goods and/or services.

See 15 U.S.C. §§1051(a)-(b), 1126(d)-(e); 37 C.F.R. §§2.32(a)(6), 2.34(b); Marmark Ltd. v. Nutrexpa S.A., 12 USPQ2d 1843, 1845 (TTAB 1989); TMEP §§806.02, 1012, 1402.01(b); see also 37 C.F.R. §2.35(b); TMEP §806.03 (regarding amendment of the basis).

An applicant may assert more than one basis in an application provided that the applicant satisfies all requirements for each basis claimed. 37 C.F.R. §2.34(b); TMEP §806.02. If applicant asserts different bases in the same application, applicant must clearly state that more than one basis is being claimed, and must separately list each basis, followed by the goods and/or services to which that basis applies. 37 C.F.R. §§2.34(b)(2), 2.35(b)(6); TMEP §806.02(a). If some or all of the goods and/or services are covered by more than one basis, this must also be expressly stated. 37 C.F.R. §§2.34(b)(2), 2.35(b)(6); TMEP §806.02(a).

Although multiple-basis applications are permitted, applicant may not assert both use in commerce under Section 1(a) and intent to use the mark in commerce under Section 1(b) for the same goods and/or services. 37 C.F.R. §2.34(b)(1); TMEP §806.02(b).

DRAWING

The drawing of the mark in the U.S. application is not acceptable because it does not correspond to the mark shown in the foreign registration. See 15 U.S.C. §1126(e); 37 C.F.R. §2.51(c). Specifically, although the foreign registration depicts the mark in color, the drawing in the U.S. application does not show the mark in color nor does it include a claim of color.

For applications based on Trademark Act Section 44(e), the drawing of the mark in the U.S. application must be a substantially exact representation of the mark that appears in the foreign registration. 37 C.F.R. §2.51(c); In re Hacot-Colombier, 105 F.3d 616, 618-19, 41 USPQ2d 1523, 1525 (Fed. Cir. 1997); TMEP §§807.12(b), 1011.01; see United Rum Merchs. Ltd. v. Distillers Corp. (S.A.), 9 USPQ2d 1481 (TTAB 1988). If the United States application has a black-and-white drawing, and color appears in the foreign registration, or color is claimed or described as a feature of the mark in the foreign registration, the mark in the United States drawing does not agree with the mark in the foreign registration. In general, the black-and-white drawing in the United States application should be amended to agree with the colored mark in the foreign registration, unless the proposed amendment would be a material alteration. TMEP section 807.12(b).

Therefore, applicant must submit a new color drawing of the mark for the U.S. application that corresponds to the mark shown in the foreign registration and which does not otherwise materially alter the mark in the U.S. application. See 37 C.F.R. §2.72(c); TMEP §§807.12(b), 1011.03. In this case, amending the drawing of the mark in the U.S. application to agree with the mark in the foreign registration would not be considered a material alteration of the mark.

In addition, applicant must provide a color claim for the U.S. application listing all of the colors that are claimed in the foreign registration, as well as a statement that describes the literal and design elements in the mark and specifies where all the claimed colors appear in those elements. See 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §§807.07(a)(i)-(b), 1011.01. If black, white, and/or gray appear in the mark and are not being claimed as color in the foreign registration, applicant must include a statement 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)(ii). Generic color names must be used, e.g., magenta, yellow, turquoise. TMEP §807.07(a)(i)-(ii). The following format is suggested: “The colors orange and white are claimed as a feature of the mark in the U.S. application. The mark consists of the following: The mark consists of the word "ANTRA" with a leaf incorporated in the letter "A". The letters are orange and outlined in white. The leaf is orange with white shading.”

If applicant cannot satisfy the above requirements, and the application currently also contains a Section 1 filing basis, applicant may respond by deleting the Section 44 basis from the application and proceeding solely on the Section 1 basis. See 15 U.S.C. §§1051(a)-(b), 1126(d)-(e); 37 C.F.R. §2.35(b)(1); TMEP §806.04. A foreign registration certificate is not required for a Section 1(a) or 1(b) basis. See 15 U.S.C. §1051(a)-(b); TMEP §806.01(a)-(b). If the application is currently based solely on Section 44, applicant may amend the basis from Section 44 to Section 1(a) or 1(b), if applicant can satisfy the requirements for the chosen basis. See 15 U.S.C. §§1051(a)-(b), 1126(e); 37 C.F.R. §2.35(b)(1); TMEP §806.03.

Pending a proper response, registration of the applied-for mark under Section 44(e) is refused because the drawing of the mark in the U.S. application is not a substantially exact representation of the mark as it appears in the drawing in the foreign registration certificate. 15 U.S.C. §1126(e); 37 C.F.R. §2.51(c); TMEP §§807.12(b), 1011.01.

FILING BASES INFORMATION

1. Section 1(a)

An application based on use of the mark in commerce must include the following:

(1) The following statement: “The mark is in use in commerce, as defined by 15 U.S.C. §1127, and was in use in such commerce on or in connection with the goods or services listed in the application as of the application filing date;”

(2) The date of first use of the mark anywhere on the goods or in connection with the services;

(3) The date of first use of the mark in commerce as a trademark or service mark;

(4) One “specimen” that shows the mark used on the goods, or in connection with the services, for each class of goods and services (i.e., shows how applicant actually uses the mark in commerce). If a specimen was not submitted with the initial application, applicant must submit the following statement: “The specimen was in use in commerce at least as early as the application filing date;” and

(5) Verification, in an affidavit or signed declaration under 37 C.F.R. §2.20, of the above statements and dates of use.

See 15 U.S.C. §1051(a); 37 C.F.R. §§2.34(a)(1), 2.59(a), 2.193(e)(1); TMEP §806.01(a).

2. Section 1(b)

An application based on a bona fide intention to use the mark in commerce must include 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)(3)(B); 37 C.F.R. §2.34(a)(2); TMEP §806.01(b); see 37 C.F.R. §2.193(e)(1).

DECLARATION

The following is a properly worded “declaration” under 37 C.F.R. §2.20. This declaration must be personally signed and dated by a person authorized under 37 C.F.R. §2.193(e)(1). TMEP §804.01(b).

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 therefrom, declares that 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)

Applicant may submit a declaration online using the Trademark Electronic Application System (TEAS) response to Office action form at http://www.gov.uspto.report/teas/eTEASpageD.htm. When in the initial screen of the TEAS response form wizard, answer “yes” to the wizard question relating to submitting a “signed declaration,” and follow the instructions within the form for signing. See 37 C.F.R. §§2.20, 2.33(a)-(b)(1), 2.193(a), (c)-(d), (e)(1); TMEP §§611.01(c), 804.01(b).

/Kathleen M. Vanston/

Examining Attorney

Law Office 107

(571) 272-9235

kathy.vanston@uspto.gov [for informal inquiries]

TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/teas/eTEASpageD.htm. 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 examining attorney. Do not respond to this Office action by e-mail; the USPTO does not accept e-mailed responses.

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.