Offc Action Outgoing

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.

ISSUE/MAILING DATE:

This Office action is in response to applicant’s communications filed on 11/13/2012. In the communication, applicant submitted (1) a statement of use for classes 007, 009, 013, 037 and 042; (2) a separate response to the Final Office action containing the surname refusal for MOOG under Trademark Act Section 2(e)(4); (3) a claim of acquired distinctiveness under Trademark Act Section 2(f) for each class according to the dates of use, applicant’s advertising evidence, supporting affidavit, ownership claims of prior registrations of the same mark.

The statement of use is accepted for classes 007, 009, 037 and 042. The surname refusal is withdrawn for classes 007, 009, 013, 037 and 042 based on the claim of acquired distinctiveness under Trademark Act Section 2(f) based on satisfying the minimum filing requirements for filing a statement of use showing at least 5 years prior use, and/or the prior registrations showing use of the same mark for related goods.

Specimen for Class 013 Does Not Show Use with the Goods

The specimen is not acceptable because it does not show the applied-for mark in use in commerce. An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in actual use in commerce for each international class of goods identified in the application, notice of allowance, or allegation of use. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).

The specimen is not acceptable as evidence of actual use because it is unambiguously labeled as a servovalve on the good itself, which could conceivably be a small component part of the class 013 goods; “Guided missile systems consisting of guided missiles and missile launching platforms and guided missile controls; automatic ammunition and propellant handling system for ground vehicles, namely, loading mechanisms in the nature of recappers, ammunition loading, supply, sorting, inserting, and transporting automation and controls component.” The specimen is labeled in the response as “Class 13 - Part of guided missile.” However, a specimen of a single, separate class 007 servovalve component does not show use of the mark with a guided missile, or any of the class 013 goods.

Examples of the type of specimens normally acceptable for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale. See TMEP §§904.03 et seq. Webpages are acceptable specimens for goods when they include a picture or textual description of the goods closely associated with the mark and sufficient information to order those goods. TMEP §904.03(i). However, leaflets, handbills, advertising circulars, and other printed advertising material generally are not acceptable specimens to show use of the mark in connection with an applicant’s goods. See TMEP §§904.03 et seq.

Therefore, applicant must satisfy one of the following, as appropriate:

(1) Submit a different specimen (a verified “substitute” specimen) that was in actual use in commerce at least as early as the filing date of the application (or prior to the filing of an amendment to allege use; or prior to the expiration of the deadline for filing a statement of use) and that shows the mark in actual use in commerce for each international class identified in the application, notice of allowance, or allegation of use.

(2) Amend the filing basis to intent to use under Section 1(b), if the current filing basis is based on use in commerce under Section 1(a). This will later necessitate additional fee(s) and filing requirements.

Pending receipt of a proper response, registration is refused because the specimen does not show the applied-for mark in use in commerce as a trademark. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).

For an overview of both the response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/specimen.jsp.

Partial Abandonment and Applicant’s Response

If applicant does not respond to this Office action within the six-month period for response, Class 013 will be deleted from the application.

The application will then proceed with class 007, 009, 037 and 042.

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney. All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response. See 37 C.F.R. §2.191; TMEP §§304.01-.02, 709.04-.05. Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights. See TMEP §§705.02, 709.06.

/Anthony Rinker/

Examining Attorney

Law Office 102

U.S. Patent and Trademark Office

571-272-5491

anthony.rinker@uspto.gov

TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

All informal e-mail communications relevant to this application will be placed in the official application record.

WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.

PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.