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  78/817297

 

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

SEARCH    TMEP §704.02   The trademark examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d). 

 

SPECIMEN UNACCEPTABLE - REFUSAL

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 §904.09.

The current specimens of record comprise what is identified by applicant as “scanned brochure and scanned page from the Applicant's website” and are unacceptable as evidence of actual trademark use for the identified goods.

 

Material Not Appropriate as Trademark Specimens

See TMEP Section 905.05

Advertising material is generally not acceptable as specimens for goods.  Any material whose function is merely to tell the prospective purchaser about the goods, or to promote the sale of the goods, is unacceptable to support trademark use.  Similarly, information or instruction sheets are generally not acceptable for showing trademark use. In re Schiapparelli Searle, 26 USPQ2d 1520 (TTAB 1993); In re Drilco Industrial Inc., 15 USPQ2d 1671 (TTAB 1990); In re ITT Rayonier Inc., 208 USPQ 86 (TTAB 1980); In re Bright of America, Inc., 205 USPQ 63 (TTAB 1979).  But see In re Ultraflight Inc., 221 USPQ 903 (TTAB 1984).

 

The following types of items are generally considered to be merely advertising are not acceptable as specimens of use on goods:  advertising circulars and brochures, price lists, announcements, publicity releases, listings in trade directories, and business cards.  Moreover, material which is used by the applicant in conducting its internal business is unacceptable as specimens of use on goods.  These materials include all the papers whose sole function is to carry out the applicant's business dealings, such as invoices, bill heads, waybills and business stationery.  See In re Chicago Rawhide Mfg. Co., 455 F.2d 563, 173 USPQ 8 (C.C.P.A. 1972); In re Bright, supra; Varian Associates v. IMAC Corp., 160 USPQ 283 (N.D. Ill. 1968); Upco Co. v. Speed Crete of La., Inc., 154 USPQ 555 (TTAB 1967); Dynacolor Corp. v. Beckman & Whitley, Inc., 134 USPQ 410 (TTAB 1962); Pendleton Woolen Mills v. Eloesser-Heynemann Co., 133 USPQ 211 (TTAB 1962); Boss Co. v. Homemaker Rugs, Inc., 117 USPQ 255 (N.D. Ill. 1958).  As to display of marks on company uniforms, see In re McDonald's Corp., 199 USPQ 702 (TTAB 1978); Toro Manufacturing Corp. v. John B. Stetson Co., 161 USPQ 749 (TTAB 1969).

 

 

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 & Position

_____________________________

             Date

Pending an adequate response to the above, the examining attorney refuses registration under Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§1051, 1052, and 1127, because the record does not show use of the proposed mark as a trademark.  TMEP §§904.11 and 1301.02 et seq.

 

IDENTIFICATION OF GOODS  TMEP §1402.01.

Applicant has submitted the following wording for International Class 007:

  gear cutting and metal forming

The wording in the identification of goods is unacceptable as indefinite and does not identify any “good” 

For example, if accurate, the applicant may amend this wording to:

·        Gear cutting machines, in International Class 007;

·        Metal forming tools, in International Class 007;

·        Metal forming machines, in International Class 007.

 

The applicant may wish to consult the on-line identification manual on the PTO homepage for

acceptable common names of goods and services.

http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/

37 C.F.R. Section 2.71(a); TMEP §1402.06   While an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  Therefor, the applicant may not amend to include any goods/services that are not within the scope of the goods/services recited in the present identification.

The identification of goods submitted for International Class 006 is accepted.

 

 

 

 

 

/Linda E. Blohm/  Trademark Examining Attorney

571.272.9129,   Law Office 110

Facsimile 571.273.9110

 

 

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.