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  78/203941

 

This letter responds to the applicant’s statement of use filed on November 10, 2004.  The examining attorney has reviewed the statement of use and determined the following.

 

Drawing and Specimen

The mark as depicted on the drawing disagrees with the mark as it appears on the specimen, and clarification is required.  Applicant must submit a substitute specimen that shows use of the mark as it appears on the drawing and include a statement that “the substitute specimen was in use in commerce prior to the expiration of the time allowed to applicant for filing a statement of use,” verified with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §§2.51, 2.59(b) and 2.72(b); TMEP §§807.14 and 904.09

 

In the present case, the drawing displays the mark as MCUP, and the specimen shows the mark as MCUP with the number “5” (or letter “s”) appearing in the corner above the letter “p”.  Applicant may not amend the drawing to conform to the display on the specimen because the essence or character of the mark would be materially altered, i.e., the mark on the specimen creates a different commercial impression from the mark on the drawing.  37 C.F.R. §2.72(b); TMEP §§807.14, 807.14(a) and 807.14(a)(i).  In addition, applicant may not withdraw the statement of use.  37 CFR §2.88(g).

 

The following is a properly worded declaration under 37 C.F.R. §2.20.  At the end of the response, the applicant should insert the declaration signed by a person authorized to sign under 37 C.F.R. §2.33(a).

 

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 and the like may jeopardize the validity of the application or document 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 applicant believes the “5” or “s” is not part of the mark and is merely a grade designation or model number, then applicant must submit a statement to that effect along with actual evidence showing use of the mark with other similar notations.  In the alternative, applicant must provide evidence or a substitute specimen showing that the proposed mark shown in the drawing creates a separate commercial impression.

 

If applicant submits a substitute specimen, then applicant should also include a statement that the specimen was in use in commerce as of <specify>, verified by a notarized affidavit or signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.61(b); TMEP §807.14(b).

 

NOTICE:  TRADEMARK OPERATION RELOCATION

 

The Trademark Operation has relocated to Alexandria, Virginia.  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, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at http://www.gov.uspto.report/teas/index.html.

 

 

Sincerely,

/Jean H. Im/

Trademark Attorney

Law Office 105

(571) 272-9303

 

 

How to respond to this Office Action:

 

You may respond formally using the Office's Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://eteas.gov.uspto.report/V2.0/oa242/WIZARD.htm and follow the instructions therein, but you must wait until at least 72 hours after receipt if the office action issued via e-mail).  PLEASE NOTE: Responses to Office Actions on applications filed under the Madrid Protocol (Section 66(a)) CANNOT currently be filed via TEAS.

 

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.