UNITED STATES PATENT AND TRADEMARK OFFICE
|
SERIAL NO: 78/163965
APPLICANT: Brother Industries, Ltd.
|
|
|
CORRESPONDENT ADDRESS: James A. Oliff Oliff & Berridge, PLC 277 South Washington Street Suite 500 Alexandria VA 22314 |
RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom103@uspto.gov
|
|
MARK: MFC
|
|
|
CORRESPONDENT’S REFERENCE/DOCKET NO: 113524
CORRESPONDENT EMAIL ADDRESS:
|
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.
|
Serial Number 78/163965
Mark: MFC
This office action supersedes any previous Office Action in connection with this application.
It has been brought to the examiner’s attention that the Office Action, dated November 6, 2003, contained the incorrect serial number for this application. This office action is issued to correct the error.
All of the substantive issues and informalities raised in the prior Office Action are incorporated by reference herein. Please note that applicant must respond to all issues raised in this Office Action, within six (6) months of the mailing date of this letter. If applicant does not respond within this time limit, the application will be abandoned.
This is a non-final office action because the examiner raises a new issue with respect to the applicant’s specimens of use.
The specimen is unacceptable as evidence of actual trademark use because it fails to demonstrate how the mark is applied to the actual goods. The specimen is informational material. 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).
A catalogue is acceptable if it meets the following requirements: (1) it includes a picture of the relevant goods, (2) it includes the mark sufficiently near the picture of the goods to associate the mark with the goods, and (3) it includes information necessary to order the goods. Lands' End Inc. v. Manbeck, 797 F. Supp. 511, 24 USPQ2d 1314 (E.D. Va. 1992); TMEP Section 905.06. The applicant’s specimen does not meet these requirements.
The applicant must submit one specimen showing the mark as used in commerce as applied to the goods. 37 C.F.R. Section 2.56. 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. Section 2.20, that the substitute specimen was in use in commerce at least as early as the filing date of the application. Jim Dandy Co. v. Siler City Mills, Inc., 209 USPQ 764 (TTAB 1981); 37 C.F.R. Section 2.59(a); TMEP §904.09.
The amended identification of goods/services is accepted and noted in the recorded.
If the applicant has any questions or needs assistance in responding to this Office Action, please feel free to telephone the assigned examining attorney.
Wendy B. Goodman
/Wendy B. Goodman/
Trademark Attorney
Law Office 103
(703) 308-9103, x409
(703) 746-8103 (fax)
ecom103@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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.