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  78/297863

 

This letter responds to the applicant’s communication filed on April 5, 2004.

 

Material Alteration

The proposed amendment of the drawing is unacceptable because it would materially alter the essence or character of the mark.  37 C.F.R. §2.72; TMEP §§807.14, 807.14(a) and 807.14(a)(i).  See In re Who? Vision Systems, Inc., 57 USPQ2d 1211 (TTAB 2000) (amendment from TACILESENSE to TACTILESENSE found to be material alteration); In re CTB Inc., 52 USPQ2d 1471 (TTAB 1999) (proposed amendment of “TURBO AND DESIGN” to typed word “TURBO” is material alteration); In re Meditech International Corp., 25 USPQ2d 1159, 1160 (TTAB 1990) (“[a] drawing consisting of a single blue star, as well as a drawing consisting of a number of blue stars, would both be considered material alterations vis-à-vis a drawing consisting of the typed words ‘DESIGN OF BLUE STAR’”); In re Wine Society of America Inc., 12 USPQ2d 1139 (TTAB 1989) (proposed amendment to replace typed drawing of “THE WINE SOCIETY OF AMERICA” with a special form drawing including those words with a crown design and a banner design bearing the words “IN VINO VERITAS” held to be a material alteration); In re Nationwide Industries Inc., 6 USPQ2d 1882 (TTAB 1988) (addition of house mark “SNAP” to product mark “RUST BUSTER” held a material alteration). Applicant’s original drawing page a filed consists of the word RENU and design but the amended drawing includes the additional wording DELIGHTING IN YOUR SATISFACTION. This additional wording materially alters the character of the mark and must be deleted from the drawing page.

 

The mark in a drawing cannot be amended if the change would materially alter the mark.  TMEP §807.14(a).  The Office determines whether a proposed amendment materially alters a mark by comparing the proposed amendment with the drawing of the mark filed with the original application.  37 C.F.R. §2.72; TMEP §807.14(a)(i).

 

If republication of the amended mark would be necessary in order to provide proper notice to third parties for opposition purposes, then the mark has been materially altered and the amendment is not permitted.  In re Who? Vision Systems Inc., 57 USPQ2d 1211, 1218 (TTAB 2000).  “The modified mark must contain the essence of the original mark, and the new form must create the impression of being essentially the same mark.”  Visa International Service Association v. Life Code Systems, Inc., 220 USPQ 740, 743 (TTAB 1983).  “That is, the new and old forms of the mark must create essentially the same commercial impression.”  In re Nationwide Industries Inc., 6 USPQ2d 1882, 1885 (TTAB 1988). The addition of the wording DELIGHTING IN YOUR SATISFACTION creates a new and distinct commercial impression.

 

Insufficient Fee

Applicant’s amended identification of goods and recitation of services is accepted and entered into the record. However, applicant must clarify the number of classes for which registration is sought.  The submitted filing fees are insufficient to cover all the classes in the application.  Specifically, the application identifies goods and/or services that are classified in at least 2 international classes, however applicant paid the fee for only 1 class.

 

Applicant must either: (1) restrict the application to the number of class(es) covered by the fee already paid, or (2) pay the required fee for each additional class(es).  37 C.F.R. §2.86(a)(2); TMEP §§810.0l, 1401.04, 1401.04(b) and 1403.01.

 

Additional Specimen Required

If applicant adds any classes, then applicant must submit a specimen showing use of the mark for each new class.  37 C.F.R. §2.86(a)(3); TMEP §§904.01(b) and 1403.01.  Applicant must also submit a statement that "the new specimen was in use in commerce on or before the application filing date," verified with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20. 37 C.F.R. §2.59(a).  If the new specimen is the same as the specimen(s) already of record, then applicant need not verify the date of use. Applicant must submit a specimen for the goods indicated in International Class 10. The previously submitted specimen is acceptable for the services in International Class 40.

 

Add Dates of Use

Applicant must amend the application to include dates of first use and use in commerce for each class of goods and/or services.  37 C.F.R. §2.86(a); TMEP §1403.01. If the dates differ from those already of record, then applicant must verify the new dates with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.71(c); TMEP 903.05. Applicant must submit specific dates of use for the goods in International class 10 and the services in International Class 40 if the application is amended to a multi-class application.

 

 

 

Entity Indefinite

In the preamble of the application, the applicant identifies itself as Randy Long and L.Bruce Pierson but in applicant’s response applicant indicates it’s entity to be an individual. A mark is usually owned by a single business entity or one individual.  If both named applicants own the mark jointly, they must state that they are joint applicants.  TMEP §803.03(d).  Applicant cannot amend the application to designate another entity as the applicant.  If the application was filed in the name of the wrong party, then this application is considered void.  In such a case, the true owner may refile a new application for the mark, with a new filing fee.  TMEP §803.06.

 

Declaration

Applicant’s signed declaration is invalid because it is not in proper form. Specifically, the signed declaration has numerous typographical errors and therefore does not use the proper language to be a valid declaration. Applicant must submit a new declaration stating that applicant believes it is the owner of the mark, dated and signed by a person authorized to sign under 37 C.F.R. §2.33(a). 

 

The following is a properly worded declaration for a §1(a) application:

 

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 he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; and that 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)

 

The applicant may wish to hire a trademark attorney because of the technicalities involved in the application.  The Patent and Trademark Office cannot aid in the selection of an attorney.  37 C.F.R. §2.11. 

 

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

 

 

 

 

 

 

/Mark T. Mullen/

Examining Attorney

Law Office 111

(703) 308-9111 ext.418

ecom111@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 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.