Offc Action Outgoing

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  78/486162

 

This responds to the applicant’s communication dated July 21, 2005.  Applicant has 1) amended its identification of goods; and 2) submitted a substitute specimen with supporting declaration.  No. 1 is acceptable.  For the reasons set forth below, the requirement for an acceptable specimen of use is maintained and made FINAL:

 

SUBSTITUTE SPECIMEN OF USE IS UNACCEPTABLE

 

Applicant’s identified goods, as amended, are “unprocessed, raw and fresh fruits.”  Applicant has provided a specimen showing the mark embroidered on shirts.  This specimen is unacceptable as evidence of actual trademark use because it does not show use of the mark on or in connection with the identified fruit goods.  Instead, the specimen appears to show use of the mark for shirts, or possibly in connection with the provision of ancillary services not identified in the application. 

 

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, such as shelf signs or banners.  TMEP §§904.04 et seq.  Applicant’s substitute specimen does not quality as a “display” because it is not clearly intended to catch the attention of purchasers and prospective purchasers as an inducement to make an immediate sale.  Applicant’s statement that its mark is not placed directly on the goods does not preclude acceptable use in commerce since the goods presumably are packaged or boxed for sale.  Indeed, applicant’s initial packaging specimen represented such an acceptable form of use, albeit bearing a mark materially different from the proposed mark.

 

Accordingly, applicant must submit (1) a substitute specimen showing the mark as it is used in commerce on the goods or on packaging for the goods, and (2) a statement that “the substitute specimen was in use in commerce at least as early as the filing date of the application,” verified with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §§2.56 and 2.59(a); TMEP §§904.01 et seq. and 904.09. 

 

The following is a sample declaration under 37 C.F.R. §2.20 with a supporting statement for a substitute specimen:

 

The undersigned being warned that willful false statements and the like 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 registration resulting there from, declares that the substitute specimen was in use in commerce at least as early as the filing date of the application; 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)

 

 

In view of the foregoing, the refusal of registration under Trademark Act Sections 1, 2, 3 and 45, 15 U.S.C. §§1051, 1052, 1053 and 1127 is continued and made final because the record does not show use of the proposed mark as a trademark.  TMEP §§904.11 and 1301.02 et seq.

 

Applicant also may overcome the refusal to register this mark by amending the application to assert a different basis for filing the application and submitting the requirements for the new basis. TMEP §§806.03 et seq.  In this case, applicant may wish to amend the application to assert a bona fide intent to use basis.

 

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

 

/Steven Perez/

Steven M. Perez

Trademark Attorney

Law Office 101

(571) 272-5888

steven.perez@uspto.gov

 

 

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.