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  78/108889

 

The examining attorney has reviewed the Statement of Use filed February 5, 2003 and notes the following:

 

SPECIMEN UNACCEPTABLE

 

The specimen is unacceptable as evidence of actual trademark use because it does not show use of the mark on the goods or their packaging. 

 

Applicant describes the specimen, which is a one-page advertising sheet, as a “point of purchase display.”

 

To be an acceptable specimen for goods, a display must be associated directly with the goods offered for sale.  It must bear the trademark prominently.  However, it is not necessary that the display be in close proximity to the goods.  See In re Marriott Corp., 459 F.2d 525, 173 USPQ 799 (C.C.P.A. 1972); Lands’ End Inc. v. Manbeck, 797 F. Supp. 511, 24 USPQ2d 1314 (E.D. Va. 1992).  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).

 

In this case, no evidence has been presented to allow the examining attorney to judge how the specimen is used in connection with the goods.  There is, therefore, no evidence that the advertisement is used in a way that is directly associated with the goods in a manner designed to catch the consumer’s attention as an inducement to make a sale.  For instance, applicant did not submit a photograph of the point of purchase display, showing how the specimen is used as a display to advertise and sell the goods.

 

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).  See TMEP §904.06(a) regarding the criteria by which a catalog or other advertising may constitute a display associated with the goods.

 

If applicant cannot submit evidence that the specimen is part of a point of sale presentation, applicant may submit a substitute specimen.  Examples of acceptable specimens are tags, labels, instruction manuals, containers or 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 prior to the expiration of the time allowed to the applicant for filing a statement of use.  Jim Dandy Co. v. Siler City Mills, Inc., 209 USPQ 764 (TTAB 1981); 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 prior to the expiration of the time allowed to the applicant for filing a statement of use.

 

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 an amendment of the dates‑of‑use clause is necessary in order to state the correct dates of first use, the applicant must verify the amendment with an affidavit or a declaration in accordance with 37 C.F.R. Section 2.20.  37 C.F.R. Section 2.71(c); TMEP section 904.05.

 

PLEASE NOTE:  Because it delays processing, submission of duplicate papers is discouraged.  Unless specifically requested to do so by the Office, parties should not mail follow up copies of documents transmitted by fax.  37 C.F.R. Section 1.4(b); TMEP section 306.04; Cf. ITC Entertainment Group Ltd. V. Nintendo of America Inc. 45 USPQ2d 2021 (TTAB 1998).

 

PLEASE NOTE:  FEE INCREASE EFFECTIVE JANUARY 1, 2003

Effective January 1, 2003, the fee for filing an application for trademark registration will be increased to $335.00 per International Class.  The USPTO will not accord a filing date to applications that are filed on or after that date that are not accompanied by a minimum of $335.00. 

 

Additionally, the fee for amending an existing application to add an additional class or classes of goods/services will be $335.00 per class for classes added on or after January 1, 2003.

 

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

 

/John M. Gartner/

Trademark Examining Attorney

Law Office 102

(703) 308-9102 ext. 134

ecom102@uspto.gov

 

 

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 E-mail, visit http://www.gov.uspto.report/web/trademarks/tmelecresp.htm 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.