UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

 

Serial Number  78/309674

 

The assigned trademark examining attorney has reviewed the referenced application and has determined the following:

Refusal—Failure to Function as a Trademark

The Examining Attorney refuses registration because the proposed mark does not function as a trademark.  Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051, 1052 and 1127.  The proposed mark neither identifies and distinguishes the goods of the applicant from those of others nor indicates their source.  In Re Remington Products Inc., 3 USPQ2d 1714 (TTAB 1987).  TMEP §§1202 et seq.  Please note that the proposed mark does not function as a trademark because the specimen submitted with the statement of use is unacceptable as evidence of actual trademark use; therefore, the proposed mark cannot identify and distinguish the applicant's goods from those of others nor indicate their source. 

 

The specimen is unacceptable as evidence of actual trademark use because it does not show use of the mark in connection with the goods listed in the application.  The statement of use indicates that the specimen is a photograph of in-store signage, that is, a point-of-sale display.  However, in order to properly evaluate the acceptability of this specimen, applicant must submit a clear photograph showing how the specimen is displayed.  37 C.F.R. §2.61(b); TMEP §904.06.  See In re Ancha Electronics Inc., 1 USPQ2d 1318 (TTAB 1986).  The photograph of only the signage is not sufficient to evaluate use of the trademark in connection with the goods.

 

The applicant must submit a specimen showing the mark as it is used in commerce.  37 C.F.R. §§2.56 and 2.88(b)(2).  Examples of acceptable specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the goods or packaging, or displays associated with the goods at their point of sale that shows the mark being used in proximity to the goods.  TMEP §§904.04 et seq.  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 prior to the expiration of the time allowed to the applicant for filing a statement of use.  37 C.F.R. §2.59(b); TMEP §§904.09 and 1109.09(b).

 

If an amendment of the dates-of-use clause is necessary in order to state the correct dates of first use, the applicant must verify the amendment with an affidavit or a declaration in accordance with 37 C.F.R. §2.20.  37 C.F.R. §2.71(c); TMEP §§903.05 and 1109.09(a).

 

Pending an adequate response to the above, the examining attorney refuses registration under Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051, 1052 and 1127, because the record does not show use of the proposed mark as a trademark.

Although the trademark examining attorney has refused registration, applicant may respond to the refusal to register by submitting evidence and arguments in support of registration. 

 

 

 

/Kimberly Frye/

Trademark Examining Attorney

Law Office 113

(571) 272-9430

(571) 273-9430 (FAX)

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond formally using the Office’s Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://www.gov.uspto.report/teas/index.html and follow the instructions, but if the Office Action has been issued via email, you must wait 72 hours after receipt of the Office Action to respond via TEAS).
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above and include the serial number, law office number and examining attorney’s name in your response.

 

STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.