Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

 

 

Serial Number  78/500691

 

This letter responds to the applicant’s communication filed on November 17, 2005.

 

Applicant’s response to the Final Office action will be evaluated as a “Request for Reconsideration” after a final refusal.

 

In response to the Final Refusal under Section 2(e)(4), the applicant attempts to claim Section 2(f) but does not follow the directions as stated in the previous  office actions pursuant to 37 C.F.R. 2.41 (b) and TMEP section 1212.04 If the applicant intends to seek registration of the mark based upon long use of the mark, the applicant must follow the directions set forth in the first and second office actions for claiming distinctiveness under Section 2(f). For the applicant’s convenience, the requirements are repeated herein for the third time.

 

Applicant may register a surname as a trademark under Trademark Act Section 2(f), 15 U.S.C. §1052(f), by establishing acquired distinctiveness in any one of the following three ways:

 

(1) submitting a claim of ownership of one or more prior registrations on the Principal Register for a mark that is the same as the mark in this application for the same or related goods and/or services.  37 C.F.R. §2.41(b); TMEP §§1212.04 et seq.OR

 

(2) submitting a statement that the mark has become distinctive of applicant's goods and/or services by reason of substantially exclusive and continuous use in commerce by the applicant for the five years preceding the date of the statement.  Applicant must verify this statement with a notarized affidavit or signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.41(b); TMEP §§1212.05 et seq. OR

 

(3) submitting actual evidence of acquired distinctiveness.  37 C.F.R. §2.41(a); TMEP §§1212.06 et seq. 

TMEP §§1211 and 1212.02(a).

 

In other words, if the applicant seeks registration under Section 2 (f) for ownership of one or more prior registrations, the applicant MUST LIST the pertinent registrations; OR not AND,

 

the applicant may claim Section 2(f) by submitting a statement that the mark has become distinctive of applicant's goods and/or services by reason of substantially exclusive and continuous use in commerce by the applicant for the five years preceding the date of the statement.  Applicant must verify this statement with a notarized affidavit or signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.41(b); TMEP §§1212.05 et seq.  Applicant did not submit a proper declaration under Section 2.20. The declaration of Ms. Westby is NOT acceptable because it does not include the language in the statue. The declaration MUST be the language found in 37 C.F.R. section 2.20.

 

 

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)

 

 

Please note, the filing of a request for reconsideration does not extend the deadline for appeal.  37 C.F.R. §2.64(b); TMEP §715.03(c).  Therefore, if an applicant files a request for reconsideration of a final action and wants to preserve the right to appeal if the request is unsuccessful, the applicant must file a notice of appeal (with the fee required by 37 C.F.R. §2.6) before the expiration of the six-month period for response to the final action, or the application will be abandoned.  See TMEP §715.04 for information about processing a request for reconsideration filed with a notice of appeal.  Applicant must respond by February 28, 2006 or the application will be abandoned.

 

 

 

/LESLEY LAMOTHE/

Trademark Attorney

Law Office 103

571-272-9184

e-mail - lesley.lamothe@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.