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. 

 

MAILING/E-MAILING DATE INFORMATION:  If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.

 

Serial Number  78/637008

 

The assigned examining attorney has reviewed the statement of use filed on 11/3/06 and has determined the following.

 

Mark on Specimen Does Not Match Mark in Drawing

The mark depicted on the drawing disagrees with the mark on the specimen.  The mark on the drawing page must be a substantially exact representation of the mark that appears on the specimen.  37 C.F.R. §2.51. 

 

In this case, the drawing displays the mark as D-ACTOR,  while the specimen shows the mark as D-ACTOR® 100. 

Applicant may not amend the drawing to conform to the display on the specimen because the essence or character of the mark would be materially altered; in other words, the mark on the specimen creates a different commercial impression from the mark on the drawing.  37 C.F.R. §2.72(b); TMEP §§807.14 et seq. 

 

Therefore, applicant must submit the following:

 

(1)   A substitute specimen showing the mark that appears on the drawing; and

 

(2)   The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “The substitute specimen was in use in commerce prior to the expiration of the time allowed applicant for filing a statement of use.”  37 C.F.R. §2.59(b)(2); TMEP §904.09.  If submitting a specimen requires an amendment to the dates of use, applicant must also verify the amended dates.  37 C.F.R. §2.71(c).

 

Applicant may not withdraw the statement of use.  37 C.F.R. §2.88(g); TMEP §1109.17.

 

For the applicant’s convenience, the following is a properly worded declaration under 37 C.F.R. Section 2.20.  At the end of the response, the applicant should insert the declaration signed by an authorized person.

 

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 may jeopardize the validity of the application or any resulting registration, declares that the facts set forth in this application are true; 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 the alternative, if applicant believes that “100” is not part of the mark and merely indicates one of several variations of the goods, then applicant must submit a statement to that effect along with actual evidence showing use of the mark with other similar notations.  In the alternative, applicant must provide evidence or a substitute specimen showing that the proposed mark shown in the drawing creates a separate commercial impression.  TMEP §807.12(d).

 

Improper Use of Registration Symbol

The specimen shows use of the federal trademark registration symbol ® with the applied-for mark.  However, USPTO records do not show that the mark is registered.  Applicant may not use the federal registration symbol until its mark is registered in the USPTO.  After registration, applicant may use this symbol in connection with the specific goods and/or services listed in the registration.  TMEP §§906 and 906.02.

 

The above information is advisory only.  Applicant need not respond to this issue.

 

 

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

 

 

 

 

/Esther A. Belenker/

Trademark Examining Attorney

Law Office 111

Tel:  571/272-9125

Fax: 571/273-9125

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond using the Office’s Trademark Electronic Application System (TEAS) Response to Office action form available on our website at http://www.gov.uspto.report/teas/index.html.  If the Office action issued via e-mail, you must wait 72 hours after receipt of the Office action to respond via TEAS.  NOTE:  Do not respond by e-mail.  THE USPTO WILL NOT ACCEPT AN E-MAILED RESPONSE.
• 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.  NOTE:  The filing date of the response will be the date of receipt in the Office, not the postmarked date.  To ensure your response is timely, use a certificate of mailing.  37 C.F.R. §2.197.

 

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.