Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE. 

 

Serial Number  78/003217

 

This letter responds to the applicant’s statement of the use filed on March 13, 2001.  The assigned examining attorney has reviewed the referenced response and determined the following.

 

SPECIMEN UNACCEPTABLE

 

The specimen is unacceptable as evidence of actual trademark use because it constitutes advertising.  Invoices, announcements, order forms, bills of lading, leaflets, brochures, publicity releases and other printed advertising material generally are not acceptable specimens for goods.  In re Bright of America, Inc., 205 USPQ 63 (TTAB 1979); TMEP §§904.05 and 904.07.  See In re Ultraflight Inc., 221 USPQ 903 (TTAB 1984).

 

It is noted that the specimen is described as a “point of purchase display.”  Displays associated with the goods essentially comprise point-of-sale material, such as banners, shelf-talkers, window displays, menus and similar devices.  These items must be designed to catch the attention of purchasers and prospective purchasers as an inducement to make a sale.  Further, the display must predominantly display the trademark in question and associate it with, or relate it to, the goods.  The display must be related to the sale of the goods so that an association of the two is inevitable.  See In re Bright of America, Inc., 205 USPQ 63 (TTAB 1979), and cases cited therein.  See also In re ITT Rayonier Inc., 208 USPQ 86 (TTAB 1980).  Cf. In re Shipley Co. Inc., 230 USPQ 691 (TTAB 1986); In re Jones, 216 USPQ 328 (TTAB 1982).  Folders and brochures that describe goods and their characteristics or serve as advertising literature are not per se “displays.”  In re Schiapparelli Searle, 26 USPQ2d 1520 (TTAB 1993); In re Drilco Industrial Inc., 15 USPQ2d 1671 (TTAB 1990).  In order to rely on such materials as specimens, an applicant must submit evidence of point-of-sale presentation.  See In re Ancha Electronics Inc., 1 USPQ2d 1318 (TTAB 1986); In re Columbia Chase Corp., 215 USPQ 478 (TTAB 1982).

In this case, there is no evidence that the specimen submitted by applicant is designed to catch the attention of purchasers and prospective purchasers as an inducement to make a sale.  That is, the specimen is not shown, for instance, in a photograph that shows how it is displayed in a retail establishment.  Without such evidence, the specimen appears to be advertising material and not a point of purchase display.  In addition, the specimen does not predominantly display the mark.  For this reason as well the specimen appears to be more of an advertisement than a point of sale presentation.

The applicant must submit a specimen showing the mark as it is used in commerce.  37 C.F.R. §2.56.  Examples of acceptable specimens are tags, labels, instruction manuals, containers, and photographs that show the mark on the goods or packaging.  TMEP §§904.04 et seq.  The applicant must verify, with an affidavit or a declaration under 37 C.F.R. §2.20, that 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 §904.09.

 

The following is an example of a proper statement and declaration:

The specimen was in use in commerce at least as early as the filing date of the application.

The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. 1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that the facts set forth in this application are true; 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)

 

If the applicant cannot comply with the requirement for specimens for the Section 1(a) basis asserted, the applicant may substitute a different basis for filing if the applicant can meet the requirements for the new basis.  In this case, the applicant may wish to amend the application to assert a Section 1(b) basis.  If the applicant chooses to amend to a Section 1(b) basis, the applicant must submit the following statement:

 

The 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 since the filing date of the application. 

 

Trademark Act Section 1(b), 15 U.S.C. Section 1051(b).  This statement must be verified with an affidavit or a declaration under 37 C.F.R. Section 2.20.  Trademark Act Section 1(b), 15 U.S.C. Section 1051(b); 37 C.F.R. Section 2.71(d)(1).

 

NOTICE:  TRADEMARK OPERATION RELOCATING OCTOBER AND NOVEMBER  2004

 

The Trademark Operation is relocating to Alexandria, Virginia, in October and November 2004.  Effective October 4, 2004, all Trademark-related paper mail (except documents sent to the Assignment Services Division for recordation, certain documents filed under the Madrid Protocol, and requests for copies of trademark documents) must be sent to:

 

Commissioner for Trademarks

P.O. Box 1451

Alexandria, VA  22313-1451

 

Applicants, registration owners, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at www.uspto.gov.

 

Cheryl Clayton /cac/

Examining Trademark Attorney

Law Office 102

703-308-9102 ext. 233

 

 

How to respond to this Office Action:

 

To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.gov.uspto.report/teas/index.html and follow the instructions.

 

To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the serial number, law office and examining attorney’s name on the upper right corner of each page of your response.

 

To check the status of your application at any time, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.gov.uspto.report/

 

For general and other useful information about trademarks, you are encouraged to visit the Office’s web site at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.