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  78/342942

 

THIS IS A FINAL ACTION

 

This final Office action is a response to applicant’s communication filed February 27, 2007.

 

Status

 

In a first Office action dated September 9, 2006, the examining attorney refused registration of applicant’s mark (Class 16 only) under Trademark Act Sections 1, 2 and 45 because the specimens showed the mark used on goods that are not “goods in trade.”  In addition, the examining attorney required applicant to submit substitute Class 16 specimens.  In its response, applicant submitted substitute specimens.

 

Goods in Trade Refusal is Made Final (Class 16 Only)

 

The examining attorney has reviewed the substitute specimens made of record by applicant but has concluded that they do not show use of the mark on goods in trade.  Therefore, the goods in trade refusal under Trademark Act Sections 1, 2 and 45 is maintained and made FINAL.  37 C.F.R. §2.64(a).

 

Registration is refused because, based on the submitted specimens of use, some of the goods to which the proposed mark is applied are not “goods in trade”; that is, the proposed mark is not being used to identify goods that are sold or transported in commerce or that have utility to others.  Trademark Act Sections 1, 2 and 45; 15 U.S.C. §§1051-1052 and 1127.  This refusal applies to the following goods:  envelopes; paper boxes; paper containers; paper cartons for delivering goods; paper bags for packaging; plastic bags for packaging; paper banners; paper tags. 

 

Incidental items used to conduct daily business (such as letterhead, invoices and business forms) are not “goods in trade” because they are not items sold or transported in commerce for use by others.  See, e.g., In re S’holders Data Corp., 495 F.2d 1360, 181 USPQ 722 (C.C.P.A. 1974) (reports not goods in trade where applicant is not engaged in the sale of reports but solely in furnishing financial reporting services, and reports are merely conduit through which services are rendered); Ex parte Bank of Am. Nat’l Trust and Sav. Ass’n, 118 USPQ 165 (Comm’r Pats. 1958) (mark not registrable for passbooks, checks and other printed forms, where forms are used only in the performance of banking services and applicant does not print or sell forms as commodities in trade); see TMEP §§1202.06 et seq.

 

In addition to being sold or transported in commerce for use by others, such items must provide a use or utility to others “on a commercial scale” to be “goods in trade.”  E.g., Paramount Pictures Corp. v. White, 31 USPQ2d 1768, 1775 (TTAB 1994), (mark not registrable for games where purported games are only advertising flyers used to promote applicant’s services and have no real utilitarian function or purpose as games); In re Douglas Aircraft Co., 123 USPQ 271 (TTAB 1959) (books, pamphlets, and brochures that serve only to explain and advertise applicant’s goods are not “goods”); TMEP §1202.06(a).

 

In this case, applicant has provided Class 16 specimens that show the mark used as the return address on an envelope, on the side of a paper bag used to carry retail purchases, and on packaging for applicant’s Class 9 goods.  The envelope shows the mark used in goods that are used incidentally by applicant in its business, rather than on goods that applicant makes to be used by others.  The paper bag shows the mark used in connection with a Class 35 retail service and the box shows use of the mark in connection with Class 9 goods.  If applicant only uses the envelopes, boxes, containers, etc. in conducting its business, applicant must amend the identification of goods to delete those goods and any other items used merely to conduct its internal business.  Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051, 1052 and 1127; TMEP §1202.06(b). 

 

Although the trademark examining attorney has refused registration, applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.

 

If applicant chooses to respond to the refusal to register, then applicant must also respond to the following requirements.

 

Specimen Requirement is Made Final (Class 16 Only)

 

The trademark examining attorney has reviewed applicant’s substitute specimen but has found that it is unacceptable.  Therefore, the requirements under TMEP §§904.04 et seq are now made FINAL for the reasons set forth below.  37 C.F.R. §2.64(a).

 

The current specimens of record comprise a page from a magazine, an envelope, a bag and a box, and are unacceptable as evidence of actual trademark use because the magazine page does not show enough of the publication to clearly show how the mark is used in the magazine, the envelope is not a “good in trade” (see above), the bag shows use of the mark in connection with retail services, and the box shows use of the mark in connection with electronics goods.  None of the specimens show use of the mark in connection with any of the Class 16 goods listed in the Notice of Allowance. 

 

The mark is shown on a magazine but more information is required regarding that specimen.  Regarding the mark as shown in the magazine, applicant must submit a copy of the cover, title page, copyright page and table of contents of the publication so that the registrability of the mark can be properly assessed.  37 C.F.R. §2.61(b); TMEP §904.02(d).  The specimen submitted by applicant does not clearly show how the mark is used in connection with the magazine.

 

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.

 

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 prior to the expiration of the time allowed applicant for filing a statement of use,” verified with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §§2.56, 2.59(b)(2) and 2.88(b)(2); TMEP §§904.09 and 1109.09(b).

 

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 to the 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)

 

 

For the foregoing reasons, this requirement is maintained and made FINAL.

 

Proper Response to Final Action

 

If applicant does not respond within six months of the mailing date of this final action, then the following class to which the final refusal applies will be deleted from the application:  Class 16.  The application will proceed forward for the remaining classes.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).

 

Applicant may respond to this final action by: 

 

(1)   submitting a response that fully satisfies all outstanding requirements, if feasible (37 C.F.R. §2.64(a)); and/or

 

(2)   filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class (37 C.F.R. §§2.6(a)(18) and 2.64(a); TMEP §§715.01 and 1501 et seq.; TBMP Chapter 1200).

 

In certain circumstances, a petition to the Director may be filed to review a final action that is limited to procedural issues, pursuant to 37 C.F.R. §2.63(b)(2).  37 C.F.R. §2.64(a).  See 37 C.F.R. §2.146(b), TMEP §1704, and TBMP Chapter 1201.05 for an explanation of petitionable matters.  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

Questions

 

If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at the number below.

 

/John M. Gartner/

Trademark Examining Attorney

Law Office 102

(571) 272-9255

 

 

 

NOTICE OF NEW PROCEDURE FOR E-MAILED OFFICE ACTIONS:  In late spring 2007, for any applicant who authorizes e-mail communication with the USPTO, the USPTO will no longer directly e-mail the actual Office action to the applicant.  Instead, upon issuance of an Office action, the USPTO will e-mail the applicant a notice with a link/web address to access the Office action using Trademark Document Retrieval (TDR), which is located on the USPTO website at http://portal.gov.uspto.report/external/portal/tow.  The Office action will not be attached to the e-mail notice.  Upon receipt of the notice, the applicant can then view and print the actual Office action and any evidentiary attachments using the provided link/web address.  TDR is available 24 hours a day, seven days a week, including holidays and weekends.  This new process is intended to eliminate problems associated with e-mailed Office actions that contain numerous attachments.

 

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.