To: | ICON IP, INC. (jrichards@wnspat.com) |
Subject: | TRADEMARK APPLICATION NO. 78235632 - IFIT - 13914.576.5 |
Sent: | 10/25/04 10:08:35 AM |
Sent As: | ECOM102@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 78/235632
APPLICANT: ICON IP, INC.
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: IFIT
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CORRESPONDENT’S REFERENCE/DOCKET NO: 13914.576.5
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.
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Serial Number 78/235632
The assigned examining attorney has reviewed the statement of use filed on September 23, 2004 and has determined the following.
The mark as depicted on the drawing does not agree with the mark as it appears on the specimen, and clarification is required. In the present case, the drawing displays the mark as IFIT, and the specimen shows the mark as I FIT SOLUTIONS (with design separating the terms). 37 C.F.R. §2.72(a); TMEP §§807.14, 807.14(a) and 807.14(a)(i). Applicant may not submit an amended drawing to conform to the display on the specimen because the character of the mark would be materially altered, i.e., the mark on the specimens creates a different commercial impression from the mark on the drawing.
Therefore, applicant must do one of the following:
(1) submit a substitute specimen showing use of the mark as it appears on the drawing, with a statement that “the substitute specimen was in use in commerce prior to the expiration of the time allowed 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. §2.59(b)(2); TMEP §904.09; or
(2) amend the basis to Section 1(b) and satisfy all the requirements for this new basis. 37 C.F.R. §2.51; TMEP §807.14.
No set form is required for response to this Office action. The applicant must respond to each point raised. The applicant should simply set forth the required changes or statements and request that the Office enter them. The applicant must sign the response. In addition to the identifying information required at the beginning of this letter, the applicant should provide a telephone number to speed up further processing.
In all correspondence to the Patent and Trademark Office, the applicant should list the name and law office of the examining attorney, the serial number of this application, the mailing date of this Office action, and the applicant's telephone number.
If the applicant has any questions or needs assistance in responding to this Office Action, please telephone the assigned examining attorney.
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.
/J. Brett Golden/
Trademark Examining Attorney
U.S Patent & Trademark Office
Law Office 102
571-272-9257
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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.