UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 78/813740
APPLICANT: John Bodger & Sons Company
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: AGASTACHE ACAPULCO
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CORRESPONDENT’S REFERENCE/DOCKET NO: BODGE.72141
CORRESPONDENT EMAIL ADDRESS: |
Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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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 78813740 AGASTACHE ACAPULCO with design
This letter responds to the applicant’s communication filed on November 01, 2006.
SUBSTITUTE DRAWING PAGE
Applicant’s proposed substitute drawing page is not permitted and has not been made of record.
Applicant may not delete matter from the mark. Applicant has proposed deleting a design element, a swirl with a graphic depiction of a flower and the term stylized term AGASTACHE; this is not permitted because they are considered a material alteration. See TMEP Section 807.14(a)
In this instance applicant does need to submit a substitute drawing, showing the mark as originally filed but with “TM” deleted because it is not part of the mark.
The standard character claim has also not made of record because the mark contains a design element and stylized font.
The mark as depicted on the drawing does not agree with the mark as it appears on the specimen, and clarification is required. 37 C.F.R. §2.51; TMEP §§807.12 and 807.12(a).
In the present case, the drawing displays the mark as AGASTACHE ACAPULCO with a swirl with a graphic depiction of a flower. The specimen shows the mark as merely AGASTACHE ACAPULCO (in a different font than the drawing page and no design element.)
Applicant may not submit an amended drawing to conform to the display on the specimen because the character of the mark would be materially altered, i.e., the mark on the specimens creates a different commercial impression from the mark on the drawing. 37 C.F.R. §2.72(a); TMEP §§807.12, 807.12(a), 807.14 et seq and 904.09.
Therefor, applicant must do one of the following:
(1) submit a substitute specimen showing use of the mark as it appears on the drawing, with 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
(2) amend the basis to Section 1(b) and satisfy all the requirements for this new basis. TMEP §806.03(c).
AMENDING TO SECTION 1(B)
Where an application is based on a bona fide intention to use the mark in commerce, applicant must submit the following statement:
Applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application as of the filing date of the application.
This statement must be verified with a notarized affidavit or a signed declaration under 37 C.F.R. §§2.20 and 2.33. Trademark Act Section 1(b), 15 U.S.C. §1051(b); 37 C.F.R. §2.34(a)(2); TMEP §806.01(b).
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.
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Signature / Print or Type Name & Position
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Date
DISCLAIMER Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a).
The requirement to disclaim AGASTACHE is maintained.
The applicant must disclaim the descriptive wording "Agastache" apart from the mark as shown. The wording is merely descriptive because applicant’s identification of goods reads “live plants, namely, agastache”
The computerized printing format for the Trademark Official Gazette requires a standard form for a disclaimer. TMEP section 1213.08 et seq. A properly worded disclaimer should read as follows:
No claim is made to the exclusive right to use AGASTACHE apart from the mark as shown.
See In re Owatonna Tool Co., 231 USPQ 493 (Comm'r Pats. 1983).
A disclaimer does not remove the disclaimed matter from the mark. It is simply a statement that the applicant does not claim exclusive rights in the disclaimed wording or design apart from the mark as shown in the drawing.
Significance Inquiry 37 C.F.R. §2.61(b); TMEP §1202.12.
Applicant’s statement that “ACAPULCO” has never been used as a varietal name and no plant patent exists under such name” has been made of record.
Applicant must still specify whether ACAPULCO has any significance with the regard to the goods, such as, do the goods emanate from Acapulco.
/Linda E. Blohm/ Trademark Examining Attorney
571.272.9129, Law Office 110
Facsimile 571.273.9110
HOW TO RESPOND TO THIS OFFICE ACTION:
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.