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  78/813724

 

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

 

No Conflicting Marks Found

 

The Office records have been searched and no similar registered or pending mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02.

 

Color Claim and Description

 

Applicant has submitted a color drawing.  37 C.F.R. §2.52(b)(1); TMEP §807.07(b).  The color claim does not list all the colors appearing in the drawing of the mark.  Moreover, applicant did not provide a description of where color appears in the mark.  If color is a feature of the mark, then applicant must submit a complete color claim and color description of the mark that references all the colors appearing in the drawing of the mark.  37 C.F.R. §2.52(b)(1); TMEP §807.07(a)(ii). 

 

The following color claim and color description are suggested:  “The colors red and yellow are claimed as a feature of the mark.  The color red appears in the word, VICTOR and the color yellow appears in the rectangle.”  Common color names should be used to describe the colors in the mark, e.g., red, yellow, blue.  TMEP §§807.07(a)(i) and (a)(ii).

 

If color is not a feature of the mark, then applicant must submit a substitute black and white drawing of the proposed mark to replace the color drawing of record.

 

For the applicant’s convenience, the requirements for a special-form drawing are as follows:

 

• The drawing must appear in black and white if color is not claimed as a feature of the mark, or in color if color is claimed as a feature of the mark.

 

• Drawings must be made with a pen or by a process that will provide high definition when copied.  A photolithographic, printer’s proof copy, or other high quality reproduction of the mark may be used.  All lines must be clean, sharp and solid, and must not be fine or crowded.

 

• The image must be no larger than 3.15 inches (8 cm) high by 3.15 inches (8cm) wide.

 

• If reduction of the mark to the required size renders any details illegible, then applicant may insert a statement in the application to describe the mark and these details.

 

37 C.F.R. §§2.52(b); TMEP §§807.04 et seq.

 

If submitted on paper, the Office prefers that the drawing be depicted on a separate sheet of non-shiny, white paper that is 8 to 8.5 inches wide and 11 to 11.69 inches long (20.3 to 21.6 cm. wide and 27.9 to 29.7 cm. long).  One of the shorter sides of the sheet should be regarded as its top edge. In addition, the drawing should include the caption “DRAWING PAGE” at the top of the drawing beginning one-inch (2.5 cm) from the top edge.  37 C.F.R. §2.54; TMEP §§807.06 et seq.

 

To submit a special form drawing electronically, applicant must attach a digitized image of the mark to the submission.  The digitized image must be in .jpg format, formatted at no less than 300 dots per inch and no more than 350 dots per inch.  The Office recommends that the digitized image of the mark have a length and width of no smaller than 250 pixels and no larger than 944 pixels.  37 C.F.R. §2.53(c); TMEP §807.05(c).  All lines in the image must be clean, sharp and solid, and not fine or crowded, and produce a high quality image when copied. 

 

The Office strictly enforces these drawing requirements.

 

Mark Differs in Drawing and Specimen

 

The mark as depicted on the drawing does not agree with the mark as it appears on the specimens, and clarification is required.  37 C.F.R. §2.51; TMEP §807.12.  Specifically, the drawing displays the mark as the word “VICTOR” in red, which is located inside a yellow rectangle, and the specimen depicts the mark as the word, VICTOR in red with an indefinite yellow background.

 

Applicant must either:

 

(1)   submit a new drawing of the mark that agrees with the mark as it appears on the specimen and that is not a material alteration of the original mark; 37 C.F.R. §2.72(a); TMEP §§807.14 et seq;  applicant must amend its color claim and description;

 

(2)   submit a substitute specimen that shows use of the mark as it presently appears on the drawing and is accompanied by a statement that “the substitute specimen was in use in commerce at least as early as the filing date of the application,” verified with an affidavit or a signed declaration under 37 C.F.R. §2.20; 37 C.F.R. §§2.59(a) and 2.72(a); TMEP §904.09; or

 

(3)   amend the application basis to intent-to-use under Section 1(b), and satisfy all the requirements for this new basis.  TMEP §806.03(c).

 

Specimen is Unacceptable

 

THIS REFUSAL APPLIES TO CLASS 9 ONLY

 

In addition to the drawing and specimen and matching, the specimen in Class 9 is unacceptable as evidence of actual trademark use because it does not show use of the mark for any goods identified in the application.  In particular, the current specimen of record comprises packaging for a liquid ant killing system, mosquito repellent refill, fly bait, and combination seed, mulch, and fertilizer, which is unacceptable because it does not show any packaging for goods, identified in Class 9.  TMEP §§904.04 et seq.

 

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.

 

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.  TMEP §§904.04 et seq.

 

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)

 

Pending an adequate response to the above, registration is refused because the specimen of record does not show use of the proposed mark as a trademark.  Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051, 1052 and 1127; TMEP §§904.11 and 1202 et seq.

 

Prior Registrations

 

Applicant appears to own more than 3 prior registrations for the same or similar mark.  If applicant is the owner of U.S. Registration Nos. 1253638, 1987184, and 2809905 and others, then applicant must submit a claim of ownership.  Please see enclosed.  37 C.F.R. §2.36; TMEP §812.  The following standard format is suggested:

 

Applicant is the owner of U.S. Registration Nos. 1253638, 1987184, and 2809905 and others.

 

If the applicant has any questions regarding this Office Action, please telephone the assigned Examining Attorney.

 

 

 

 

 

Lana H. Pham /lhp/

Trademark Attorney

United States Patent and Trademark Office

(571) 272-9478

Lana.Pham@uspto.gov (informal communication)

 

 

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.