Examiners Amendment Priority

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:

PRIORITY ACTION

ISSUES APPLICANT MUST ADDRESS: On December 19, 2016, the trademark examining attorney and George Pappas discussed the issues below. Applicant must timely respond to these issues. See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §§708, 711.

INTRODUCTION

This Office action is in response to applicant’s communication filed on 12/10/16.

In a previous Office action(s) dated 7/7/16, the trademark examining attorney refused registration of the applied-for mark based on the following: failure to show the applied-for mark in use in commerce with any of the specified goods based on the mark differing on the drawing and specimen as well as the specimen being print advertising for goods. In addition, applicant was required to satisfy the following requirement(s): amend the identification of goods, clarify the mark description.

Based on applicant’s response and the examiner’s amendment below, the trademark examining attorney notes that the following requirement(s) have been satisfied: definite amended identification provided. See TMEP §§713.02, 714.04. However, because the substitute drawing that was submitted represents a material alteration of the mark, the drawing amendment is not accepted and the original drawing remains operative. Therefore the refusals for a failure to show the applied-for mark in use in commerce and the mark description requirement are maintained.

SUMMARY OF ISSUES:

Drawing Amendment Not Accepted – Material Alteration
Refusal – Mark Differs on Drawing and Specimen
Refusal – Specimen is Print Advertising for Goods

Requirement – Mark Description

DRAWING AMENDMENT NOT ACCEPTED – MATERIAL ALTERATION

Applicant has requested that the drawing of the mark be amended. The proposed amended drawing displays the mark as a grinning fireman wearing a firefighter’s helmet where the fireman’s left arm and index finger point forward while the right arm rests against the upper body. However, the original drawing displayed the mark as a grinning fireman wearing a firefighter’s helmet where the fireman’s left arm and index finger point forward while the right arm points upward in a raised fist.

An amendment to a mark will not be accepted if the change would materially alter the mark in the initial application. 37 C.F.R. §2.72; TMEP §807.14. Determining whether a proposed amendment materially alters a mark involves comparing the proposed amended mark with the mark in the drawing filed with the original application. 37 C.F.R. §2.72; TMEP §807.14(d).

The test for material alteration is whether the modified mark retains what is the essence of the original mark; that is, whether the new and old forms create the impression of being essentially the same mark. In re Hacot-Columbier, 105 F.3d 616, 620, 41 USPQ2d 1523, 1526 (Fed. Cir. 1997) (quoting Visa Int’l Serv. Ass’n v. Life Code Sys., Inc., 220 USPQ 740, 743 (TTAB 1983)); see In re Nationwide Indus. Inc., 6 USPQ2d 1882, 1885 (TTAB 1988); TMEP §807.14. For example, if republication of the amended mark would be necessary to provide proper notice of the mark to third parties for opposition purposes, then the mark has been materially altered and the amendment is not permitted. In re Hacot-Columbier, 105 F.3d at 620, 41 USPQ2d at 1526 (quoting Visa Int’l Serv. Ass’n v. Life Code Sys., Inc., 220 USPQ at 743-44). Also, the addition of an element that would require a further search may be a factor in determining material alteration. In re Guitar Straps Online, LLC, 103 USPQ2d 1745, 1747 (TTAB 2012); In re Who? Vision Sys. Inc., 57 USPQ2d 1211, 1218 (TTAB 2000).

In the present case, the proposed amendment to the mark is refused because it would result in a material alteration of the mark depicted in the original application. TMEP §807.17; see 37 C.F.R. §2.72; In re Who? Vision Sys., Inc., 57 USPQ2d 1211 (holding proposed amendment from “TACILESENSE” to “TACTILESENSE” to be material alteration due to the difference in meaning or connotation between the marks); In re CTB Inc., 52 USPQ2d 1471 (TTAB 1999) (holding proposed amendment of TURBO and design to the typed word TURBO to be a material alteration due to the design being distinctive matter).

Specifically, the proposed amendment would materially alter the mark in the initial application because the commercial impression associated with the illustrated figure has been changed. In the original drawing, the figure is raising his arm in a celebratory fashion. However, in the substitute drawing, the figure is resting his arm against his hip. The modified mark must create the impression of being essentially the same mark. Here the applicant has substituted a first distinctive pose for a second distinctive pose, deletion or addition of distinctive matter to a mark constitutes a material alteration as it modifies the essence of the original mark. See TMEP §807.14. Furthermore, the modification of the figure’s pose would require further search. As a general rule, the addition of any element that would require a further search will constitute a material alteration. In re Pierce Foods Corp., 230 USPQ 307, 308-09 (TTAB 1986).

Accordingly, the proposed amendment will not be entered; the previous drawing of the mark will remain operative. See TMEP §807.17.

REFUSAL – MARK DIFFERS ON DRAWING AND SPECIMEN

Registration is refused because the two submitted specimens do not show the applied-for mark in the drawing in use in commerce in International Class(es) 7. 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), 1301.04(g)(i). Specifically, the specimen displays the mark as a grinning fireman wearing a firefighter’s helmet where the fireman’s left arm and index finger point forward while the right arm rests against the upper body; however, the drawing displays the mark as a grinning fireman wearing a firefighter’s helmet where the fireman’s left arm and index finger point forward while the right arm points upward in a raised fist.

The drawing shows the mark sought to be registered, and 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(a); TMEP §807.12(a). Because the mark in the drawing is not a substantially exact representation of the mark on the specimen, applicant has failed to provide the required evidence of use of the applied-for mark in commerce on or in connection with applicant’s goods and/or services. See TMEP §807.12(a).

An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of goods and/or services identified in the application or amendment to allege use. 15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).

Examples of specimens for goods include tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, and displays associated with the actual goods at their point of sale. See TMEP §§904.03 et seq. Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods. TMEP §904.03(i).

Regarding whether applicant may submit an amended drawing in response to this refusal, applicant is advised that the drawing of a 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. In this case, amending the mark in the drawing to conform to the mark on the specimen would be a material alteration and would not be accepted, because the difference between the mark in the specimen and the drawing is significant and each mark creates a different commercial impression. The question of material alteration due to the differences between these two marks was discussed in the previous section of this office action.

Applicant may respond to this refusal by satisfying one of the following for each applicable international class:

(2) Amend the filing basis to intent to use under Section 1(b), for which no specimen is required. This option will later necessitate additional fee(s) and filing requirements such as providing a specimen at a subsequent date.

For an overview of both 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/J3_1.jsp.

Applicant should note the following additional ground for refusal.

REFUSAL – SPECIMEN IS PRINT ADVERTISING FOR GOODS

Registration is refused because the two submitted specimens in International Class 7 consist of advertising material and thus do not show the applied-for mark in use in commerce for the identified goods for each international class. 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). Advertising materials are generally not acceptable as specimens to show use in commerce for goods. See In re MediaShare Corp., 43 USPQ2d 1304, 1307 (TTAB 1997); In re Schiapparelli Searle, 26 USPQ2d 1520, 1522 (TTAB 1993); TMEP §904.04(b), (c).

Applicant’s submitted specimens are print catalogs with information about applicant’s applied-for goods. In appropriate cases, catalogs are acceptable specimens of trademark use. See Lands’ End Inc. v. Manbeck, 797 F. Supp. 511, 24 USPQ2d 1314 (E.D. Va. 1992). However, in order to be acceptable as a specimen, the catalog must (1) include a picture or a sufficient textual description of the relevant goods; (2) show the mark in association with the goods; and (3) include the information necessary to order the goods (e.g., an order form or a phone number, mailing address, or e-mail address for placing orders). See TMEP §904.03(h). In this case, the specimen is missing the information necessary to order applicant’s applied-for goods and therefore this specimen is considered to be advertising material.

Applicant may respond to this refusal by satisfying one of the following for each applicable international class:

(1) Submit a different specimen (a verified “substitute” specimen) that (a) 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 and (b) shows the mark in actual use in commerce for the goods identified in the application or amendment to allege use. A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20: “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.” The substitute specimen cannot be accepted without this statement.

Although applicant’s mark has been refused registration, applicant may respond to the refusals by submitting evidence and arguments in support of registration. However, if applicant responds to the refusals, applicant must also respond to the requirements set forth below.

REQUIREMENT – MARK DESCRIPTION

The description of the mark is accurate but incomplete because it does not describe all the significant aspects of the applied-for mark. Applications for marks not in standard characters must include an accurate and concise description of the entire mark that identifies literal elements as well as any design elements. See 37 C.F.R. §2.37; TMEP §§808 et seq.

Therefore, applicant must provide a more complete description of the applied-for mark. The following is suggested:

The mark consists of a fireman wearing a firefighter’s helmet with the number “1” on the shield, the fireman’s lower body is made up of a chisel breaking the ground into cracks with the stylized word “AJAX” printed vertically on the fireman’s upper body and where the letter “J” has an oversized dot. The fireman’s left arm and index finger point forward while the right arm points upward in a raised fist. Appearing around the fireman are partial curved outlines indicating movement.

CONCLUSION

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. §§2.62(c), 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.

EXAMINER’S AMENDMENT

APPLICATION HAS BEEN AMENDED: In accordance with the authorization granted by the individual identified in the Priority Action section above, the trademark examining attorney has amended the application as indicated below. Please advise the undersigned immediately of any objections. TMEP §707. Any amendments to the identification of goods and/or services may clarify or limit the goods and/or services, but may not add to or broaden the scope of the goods and/or services. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq.

IDENTIFICATION OF GOODS

The identification of goods is amended to read as follows:

Class 7: Extrication rescue tools, namely, power hammers and chisels for machines; confined space search and rescue tools, namely, power hammers and chisels for machines; extrication rescue kits comprising pneumatic power hammers, chisels, air hoses and couplers for connecting to air compressors and compressed air bottles; confined space search and rescue kits comprising pneumatic power hammers, chisels, air hoses and couplers for connecting to air compressors and compressed air bottles; pneumatic power hammers, chisels for machines, and couplers for connecting to air compressors and compressed air bottles

See TMEP §§1402.01, 1402.01(e).

/Stefan M. Oehrlein/

Trademark Examining Attorney

Law Office 115

(571) 272-1308

stefan.oehrlein@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.