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:

The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

SEARCH OF OFFICE’S DATABASE OF MARKS

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).

CLAIM OF OWNERSHIP OF REGISTRATIONS

If applicant is the owner of U.S. Registration Nos. 2172207, 2525719,2977921, 3032991, and 3508192, then applicant must submit a claim of ownership. See 37 C.F.R. §2.36; TMEP §812. The following standard format is suggested:

Applicant is the owner of U.S. Registration Nos. 2172207, 2525719,2977921 and others.

DRAWING OF THE MARK

Applicant must submit a new drawing with the registration notice ® deleted. See TMEP §807.14(a). This is not considered part of the mark and is not registrable matter. See id. Although deleting this unregistrable matter from the drawing of the mark is acceptable, changing or modifying the mark in other ways is only acceptable if such changes do not materially alter the mark depicted in the original drawing. See 37 C.F.R. §2.72(a)(2); TMEP §807.14.

The new drawing must show a clear depiction of the mark that will produce a high-quality image when copied; all lines must be clean, sharp and solid, not fine or crowded. See 37 C.F.R. §§2.52, 2.53(c), 2.54(e). The mark should appear in black on a white background unless the color is a feature of the mark, in which case the mark should be depicted in color on a white background. 37 C.F.R. §§2.52(b), (b)(1), 2.54(d).

If the new drawing of the mark is submitted on paper, the paper should be approximately 8.5 inches wide by 11 inches long, white, non-shiny, and include the caption “DRAWING PAGE” at the top. 37 C.F.R. §2.54(a)-(c). For drawings submitted online via the Trademark Electronic Application System (TEAS), the image must be in jpg format. 37 C.F.R. §2.53(c). Please review the instructions in the TEAS online response to Office action form for more information about electronic drawing submissions.

DRAWING – UNCLEAR IF CONFIGURATION INTENDED

It is not clear from the record whether or not the applicant is seeking to register the configuration of the packaging for the goods. If so, please note the following requirements for the drawing.

For marks consisting of a configuration of the goods or their packaging or a specific design feature of the goods or packaging, the drawing must depict a single three-dimensional view of the goods or packaging, showing in solid lines those features that applicant claims as its mark. See 37 C.F.R. §2.52(b)(2); TMEP §§807.10, 1202.02(c)(iv); In re Minn. Mining & Mfg. Co., 335 F.2d 836, 839, 142 USPQ 366, 368-69 (C.C.P.A. 1964). If the mark cannot be adequately depicted in a single rendition, applicant must file a petition to the Director requesting that the requirement to provide a single rendition of the mark be waived. TMEP §807.10.

If the drawing includes additional matter not claimed as part of the mark (i.e., that reflects the position or placement of the mark), applicant must depict the additional matter using broken lines. 37 C.F.R. §2.52(b)(4); In re Famous Foods, Inc., 217 USPQ 177, 177 (TTAB 1983); TMEP §§807.08, 1202.02(c)(i); see In re Water Gremlin Co., 208 USPQ 89, 91 (C.C.P.A. 1980).

In addition to these drawing requirements, applicant must also submit a clear and concise description of the mark that (1) indicates that the mark is a configuration of the goods or their packaging or a specific design feature of the goods or packaging, and (2) describes in detail the features that applicant claims as its mark. See 37 C.F.R. §§2.37, 2.52(b)(2); In re Famous Foods, 217 USPQ at 178; TMEP §§807.10, 1202.02(c)(ii). If the drawing includes broken lines to indicate placement of the mark, or matter not claimed as part of the mark, the description should include a statement indicating that the matter shown in broken lines is not part of the mark and serves only to show the position or placement of the mark. 37 C.F.R. §2.52(b)(4); TMEP §§807.08, 1202.02(c)(ii).

MARK DIFFERS ON DRAWING AND SPECIMEN

The mark on the specimen disagrees with the mark on the drawing. In this case, the specimen displays the mark as HYLAND’S in three places; and the drawing shows the mark as HYLAND’S in four places.

An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each class of goods and/or services. 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 mark on the drawing must be a substantially exact representation of the mark on the specimen. 37 C.F.R. §2.51(a); TMEP §807.12(a); see 37 C.F.R. §2.72(a)(1).

The drawing of the mark can be amended only if the amendment does not materially alter the mark as originally filed. 37 C.F.R. §2.72(a)(2); see TMEP §§807.12(a), 807.14 et seq. However, amending the mark in the drawing to conform to the mark on the specimen would be a material alteration in this case because the mark on the specimen creates a different commercial impression from the mark on the drawing.

Therefore, applicant must submit the following:

(1) A substitute specimen showing use in commerce of the mark on the drawing. See TMEP §807.12(a).; and

(2) The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “The substitute specimen was in use in commerce at least as early as the filing date of the application.” See 37 C.F.R. §§2.59(a), 2.193(e)(1); 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.

Examples of specimens 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. Examples of specimens for services are signs, photographs, brochures, website printouts or advertisements that show the mark used in the actual sale or advertising of the services. See TMEP §§1301.04 et seq.

If applicant cannot satisfy the above requirements, applicant may amend the application from a use in commerce basis under Trademark Act Section 1(a) to an intent to use basis under Section 1(b), for which no specimen is required. See TMEP §806.03(c). However, if applicant amends the basis to Section 1(b), registration will not be granted until applicant later amends the application back to use in commerce by filing an acceptable allegation of use with a proper specimen. See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103.

To amend to Section 1(b), applicant must submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “Applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods and/or services listed in the application as of the filing date of the application.” 37 C.F.R. §2.34(a)(2); TMEP §806.01(b); see 15 U.S.C. §1051(b); 37 C.F.R. §§2.35(b)(1), 2.193(e)(1).

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 and/or service mark. 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).

SPECIMEN REQUIRED

The specimen shows use of the federal registration symbol ® with the applied-for mark. However, the USPTO records do not show that the mark is registered. Applicant may not use the federal registration symbol until its mark is registered in the USPTO. TMEP §§906, 906.03. After registration, applicant may use this symbol in connection with the specific goods and/or services listed in the registration. Id.

This information is advisory only. Applicant need not respond to this issue.

SAMPLE DECLARATION

The following is a sample declaration for a verified substitute specimen for use in a paper response:

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 therefrom, 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 and Position)

_____________________________

(Date)

If applicant has questions about the application or this Office action, please telephone the assigned trademark examining attorney at the telephone number below.

/Steven W. Jackson/

Steven W. Jackson

Trademark Attorney

Law Office 107

Phone: 571-272-9409

Fax: 571-273-9107

steven.jackson@uspto.gov

TO RESPOND TO THIS LETTER: Use the Trademark Electronic Application System (TEAS) response form at http://teasroa.gov.uspto.report/roa/. Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov.

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 Trademark Applications and Registrations Retrieval (TARR) at http://tarr.gov.uspto.report/. Please keep a copy of the complete TARR screen. If TARR shows no change for more than six months, 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/teas/eTEASpageE.htm.