To: | Fios, Inc. (trademarks@lanepowell.com) |
Subject: | TRADEMARK APPLICATION NO. 78161348 - PREVAIL - 705765.0017 |
Sent: | 1/28/03 1:19:11 PM |
Sent As: | ECom116 |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 78/161348
APPLICANT: Fios, Inc.
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CORRESPONDENT ADDRESS: Adam D. Ross Lane Powell Spears Lubersky LLP 601 SW 2nd Ave., Suite 2100 Portland OR 97204-3158
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3513 ecom116@uspto.gov
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MARK: PREVAIL
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CORRESPONDENT’S REFERENCE/DOCKET NO: 705765.0017
CORRESPONDENT EMAIL ADDRESS: trademarks@lanepowell.com |
Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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Serial Number 78/161348
The assigned examining attorney has reviewed the referenced application and determined the following.
NO CONFLICTING MARKS
The examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.
DRAWING
The drawing displays the mark as the wording “PREVAIL” within a square design. In the drawing, the letters of the wording appear as “zig-zag” lines or edges. However, this differs from the display of the mark on the specimen, where it appears as the wording “PREVAIL” within a square. The letters of the wording in the specimen have smooth edges. The applicant must either:
(1) submit a new drawing of the mark that agrees with the specimen; or
(2) submit a substitute specimen that shows use of the mark shown in the drawing.
37 C.F.R. §2.51; TMEP §§807.14 and 807.14(a)(i). The applicant may not amend the drawing if the amendment would materially alter the character of the mark. 37 C.F.R. §2.72(a); TMEP §807.14(a).
If a substitute specimen is submitted, 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) and 2.72(a); TMEP §904.09.
Previously, because 37 C.F.R. §2.72 did not expressly prohibit an amendment that materially alters the mark on the original drawing, the Office accepted amendments to correct “internal inconsistencies,” even if the amendment materially altered the mark on the original drawing. An application was considered “internally inconsistent” if the mark on the drawing did not agree with the mark on the specimens in an application based on use, or with the mark on the foreign registration in an application based on Trademark Act Section 44. See In re ECCS, Inc., 94 F.3d 1578, 39 USPQ2d 2001 (Fed. Cir. 1996); In re Dekra e.V., 44 USPQ2d 1693 (TTAB 1997).
Effective October 30, 1999, 37 C.F.R. §2.72 was amended. The revised rule applies to applications pending on or after October 30, 1999. Under the new rule, an applicant cannot amend the drawing of the mark if the change materially alters the mark. The new rule also requires the Office to determine whether a proposed amendment materially alters a mark by comparing the proposed amendment with the description or drawing of the mark filed with the original application. TMEP §807.14(a)(i).
Applicant may respond to this Office action using the Office’s Trademark Electronic Application System (TEAS) at <http://www.gov.uspto.report/teas/index.html>. When using TEAS the data the applicant submits is directly uploaded into the Office’s database, which reduces processing time and eliminates the possibility of data entry errors by the Office. Applicants are strongly encouraged to use TEAS to respond to Office actions. Applicants using TEAS should not submit a duplicate paper copy of the response.
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.
/Karen Bracey/
Examining Attorney, Law Office 116
(703) 306-7914
(703) 746-8116 - fax
ecom116@uspto.gov (formal response)
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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.