To: | Barton Mines Corporation (dctrademarks@dbr.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 85566966 - BARTON - 006510/12174 |
Sent: | 6/20/2012 10:29:53 AM |
Sent As: | ECOM110@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
APPLICATION SERIAL NO. 85566966
MARK: BARTON
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Barton Mines Corporation
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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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: 6/20/2012
MARK IS PRIMARILY A SURNAME
Please see the attached evidence from www.411.com and a surname website, establishing the surname significance of the surname Baron. This evidence shows the applied-for mark appearing numerous times as a surname in a nationwide telephone directory of names. The first 100 names are provided.
SUPPLEMENTAL REGISTER/2F ACQUIRED DISTINCTIVENESS
Applicant can amend its application to seek registration on the Principal Register based on a claim of acquired distinctiveness by (1) submitting actual evidence that the mark has acquired distinctiveness of applicant’s goods and/or services, (2) claiming ownership of a prior U.S. registration for the same mark and the same or related goods and/or services, or (3) providing the following verified statement: “The mark has become distinctive of the goods and/or services through applicant’s substantially exclusive and continuous use in commerce for at least five years immediately before the date of this statement.” See 15 U.S.C. §1052(f); 37 C.F.R. §2.41; TMEP §§1212 et seq.
To amend the application to the Supplemental Register, applicant must request such an amendment. See 15 U.S.C. §1091; 37 C.F.R. §2.47.
IDENTIFICATION OF GOODS/SERVICES
CLASS 3
The wording is too broad and the nature of the goods is unclear. The applicant must indicate what type of abrasives they are providing by name. The industry or field must be provided or if the abrasives are for cleaning this must be indicated as well.
Applicant may adopt the following identification, if accurate:
CLASS 35
The Class 35 services are acceptable as listed.
CLASS 40
The applicant must indicate if the services are “custom” manufacture or indicate that they are to the order and specification of others. Applicant may adopt the following identification, if accurate:
“Manufacturer of cutting, finishing and surface preparation products, namely, garnet abrasive grains and powders, coated and bonded abrasives and blasting abrasives for industrial and commercial applications to the order and specification of others.” International Class 40.
For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.
For an application with more than one international class, called a “multiple-class application,” an applicant must meet all of the requirements below for those international classes based on use in commerce:
(1) LIST GOODS/SERVICES BY INTERNATIONAL CLASS: Applicant must list the goods/services by international class;
(2) PROVIDE FEES FOR ALL INTERNATIONAL CLASSES: Applicant must submit an application filing fee for each international class of goods and/or services not covered by the fee(s) already paid (confirm current fee information at http://www.uspto.gov, click on “View Fee Schedule” under the column titled “Trademarks”); and
(3) SUBMIT REQUIRED STATEMENTS AND EVIDENCE: For each international class of goods and/or services, applicant must also submit the following:
(a) DATES OF USE: Dates of first use of the mark anywhere and dates of first use of the mark in commerce, or a statement that the dates of use in the initial application apply to that class. The dates of use, both anywhere and in commerce, must be at least as early as the filing date of the application.;
(b) SPECIMEN: One specimen showing the mark in use in commerce for each international class of goods and/or services. Applicant must have used the specimen in commerce at least as early as the filing date of the application. If a single specimen supports multiple international classes, applicant should indicate which classes the specimen supports. 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 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.;
(c) STATEMENT: The following statement: “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.”; and
(d) VERIFICATION: Applicant must verify the statements in 3(a) and 3(c) (above) in an affidavit or signed declaration under 37 C.F.R. §2.20. Verification is not required where (1) the dates of use for the added class are stated to be the same as the dates of use specified in the initial application, and (2) the original specimens are acceptable for the added class(es).
See 15 U.S.C. §§1051(a), 1112, 1127; 37 C.F.R. §§2.32(a)(5), 2.34(a)(1), 2.56(a), 2.71(c), 2.86(a), 2.193(e)(1); TMEP §§1403.01, 1403.02(c).
SIGNED DECLARATION REQUIRED
The application was not signed and verified, which are application requirements. See 15 U.S.C. §1051(a); 37 C.F.R. §§2.33(a)-(b)(1), 2.34(a)(1)(i). Therefore, applicant must verify the statements specified further below in a signed affidavit or declaration under 37 C.F.R. §2.20. See 15 U.S.C. §1051(a)(3); 37 C.F.R. §§2.33(a)-(b)(1), (c), 2.193(e)(1); TMEP §§804.02, 806.01(a).
If applicant responds to this Office action online via the Trademark Electronic Application System (TEAS), applicant may satisfy this requirement by answering “yes” to the TEAS response form wizard question relating to submitting a “signed declaration,” and following the instructions within the form for signing. See 37 C.F.R. §§2.33(a)-(b)(1), (c), 2.193(a), (c)-(d), (e)(1); TMEP §§611.01(c), 804.01(b).
If applicant responds to this Office action on paper, via regular mail, applicant may satisfy this requirement by providing the following statements and declaration at the end of the response, personally signed by a person authorized under 37 C.F.R. §2.193(e)(1) and dated, with the printed or typed name of the signatory appearing immediately below the signature. See 37 C.F.R. §§2.20, 2.33(a)-(b)(1), (c), 2.193(a), (d); TMEP §§611.01(b), 804.01(b).
STATEMENTS: The undersigned is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered; the mark is in use in commerce and was in use in commerce on or in connection with the goods and/or services listed in the application as of the application filing date; the specimen shows the mark as used on or in connection with the goods or services listed in the application; the facts set forth in the application are true and accurate; and to the best of the undersigned’s knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive.
DECLARATION: 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 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 the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
/Rebecca Smith/
Rebecca A. Smith
Trademark Attorney
Law Office 110
571-272-9223
rebecca.smith6@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 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 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.