UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.

 

ISSUE/MAILING DATE: 4/12/2008

 

This Office action is in response to applicant’s communication filed on 03/15/08.  Applicant’s response raises a new material alteration issue which is discussed below.  The issue with respect to the mark on the drawing not matching the specimen is maintained and CONTINUED.

 

MATERIAL ALTERATION

 

A mark cannot be amended if the change would materially alter the mark.  37 C.F.R. §2.72; TMEP §807.14.  The Office determines whether a proposed amendment materially alters a mark by comparing the proposed amended mark with the mark in the drawing filed with the original application.  TMEP §807.14(c).

 

If republication of the amended mark would be necessary in order to provide proper notice to third parties for opposition purposes, then the mark has been materially altered and the amendment is not permitted.  In re Who? Vision Sys. Inc., 57 USPQ2d 1211, 1218 (TTAB 2000).  “The modified mark must contain the essence of the original mark, and the new form must create the impression of being essentially the same mark.”  Visa Int’l Serv. Ass’n v. Life Code Sys., Inc.,220 USPQ 740, 743 (TTAB 1983).  “That is, the new and old forms of the mark must create essentially the same commercial impression.”  In re Nationwide Indus. Inc., 6 USPQ2d 1882, 1885 (TTAB 1988); see TMEP §807.14.

 

The original drawing filed with the application shows the mark as "CROSSBOW" - A SURVEYORS' DEVICE TO ELECTRONICALLY MEASURE DEPTHS OF MANHOLES.  The proposed amendment of the drawing shows the mark as CROSSBOW.  The proposed amendment of the drawing is unacceptable because it is a material alteration.  Therefore, the original drawing,  "CROSSBOW" - A SURVEYORS' DEVICE TO ELECTRONICALLY MEASURE DEPTHS OF MANHOLES, is the drawing of the record.  Applicant may not amend the drawing page to CROSSBOW.

 

MARK ON DRAWING DOES NOT MATCH MARK ON SPECIMEN

 

The mark on the specimen disagrees with the mark on the drawing.  In this case, the specimen displays the mark as CROSSBOW SURVEY TOOL, while the drawing shows the mark as "CROSSBOW" - A SURVEYORS' DEVICE TO ELECTRONICALLY MEASURE DEPTHS OF MANHOLES.

 

The mark on the drawing must be a substantially exact representation of the mark as used on or in connection with the goods and/or services, as shown by the specimen.  37 C.F.R. §2.51(b); TMEP §807.12(a); see 37 C.F.R. §2.72(b)(1).  However, applicant may not amend the mark on 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.  See 37 C.F.R. §2.72(b); TMEP §§807.12(a), 807.14 et seq.

 

Therefore, applicant must submit the following:

 

(1)     A substitute specimen showing use in commerce of the mark on the drawing.  See 37 C.F.R. §2.59(b)(2); TMEP §904.05.; and

 

(2)     The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §§2.20, 2.33: “The substitute specimen was in use in commerce prior to the expiration of the time allowed applicant for filing a statement of use.”  See 37 C.F.R. §2.59(b)(2); TMEP §904.05.  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); TMEP §904.05.

 

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

 

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 prior to the expiration of the time allowed applicant for filing a statement of use; 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)

 

 

 

 

 

TEAS PLUS APPLICANTS MUST SUBMIT DOCUMENTS ELECTRONICALLY OR SUBMIT FEE:  TEAS Plus applicants should submit the following documents using the Trademark Electronic Application System (TEAS) at http://www.gov.uspto.report/teas/index.html:  (1) written responses to Office actions; (2) preliminary amendments; (3) changes of correspondence address; (4) changes of owner’s address; (5) appointments and revocations of attorney; (6) amendments to allege use; (7) statements of use; (8) requests for extension of time to file a statement of use, and (9) requests to delete a §1(b) basis.  If any of these documents are filed on paper, they must be accompanied by a $50 per class fee.  37 C.F.R. §§2.6(a)(1)(iv) and 2.23(a)(i).  Telephone responses will not incur an additional fee.  NOTE:  In addition to the above, applicant must also continue to accept correspondence from the Office via e-mail throughout the examination process in order to avoid the additional fee.  37 C.F.R. §2.23(a)(2).

 

 

 

 

/Ramona Ortiga Palmer/

Trademark Examining Attorney

Law Office 117

571-272-9715

 

 

 

RESPOND TO THIS ACTION: If there are any questions about the Office action, please contact the assigned examining attorney. A response to this Office action should be filed using the form available at http://www.gov.uspto.report/teas/eTEASpageD.htm. If notification of this Office action was received via e-mail, no response using this form may be filed for 72 hours after receipt of the notification. Do not attempt to respond by e-mail as the USPTO does not accept e-mailed responses.

 

If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response.  Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.

 

STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov.  When conducting an online status check, print and maintain a copy of the complete TARR screen.  If the status of your application has not changed for more than six months, please contact the assigned examining attorney.

 

 

 

 

 

                                                                

IMPORTANT NOTICE

USPTO OFFICE ACTION HAS ISSUED ON 4/12/2008 FOR

APPLICATION SERIAL NO. 78822838

 

Please follow the instructions below to continue the prosecution of your application:

  

VIEW OFFICE ACTION: Click on this link http://tmportal.gov.uspto.report/external/portal/tow?DDA=Y&serial_number=78822838&doc_type=OOA&mail_date=20080412 (or copy and paste this URL into the address field of your browser), or visit http://tmportal.gov.uspto.report/external/portal/tow and enter the application serial number to access the Office action.

 

PLEASE NOTE: The Office action may not be immediately available but will be viewable within 24 hours of this notification.

 

RESPONSE MAY BE REQUIRED: You should carefully review the Office action to determine (1) if a response is required; (2) how to respond; and (3) the applicable response time period. Your response deadline will be calculated from 4/12/2008.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise attempt to e-mail your response, as the USPTO does NOT accept e-mailed responses.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System response form at http://www.gov.uspto.report/teas/eTEASpageD.htm.

 

HELP: For technical assistance in accessing the Office action, please e-mail

TDR@uspto.gov.  Please contact the assigned examining attorney with questions about the Office action. 

 

        WARNING

1. The USPTO will NOT send a separate e-mail with the Office action attached.

 

2. Failure to file any required response by the applicable deadline will result in the ABANDONMENT of your application.