| To: | The American Foundation for Firearm Inju ETC. (kltrademark@kramerlevin.com) |
| Subject: | U.S. TRADEMARK APPLICATION NO. 88294777 - AFFIRM - 070709-00001 |
| Sent: | 4/23/2019 6:05:15 PM |
| Sent As: | ECOM111@USPTO.GOV |
| Attachments: | Attachment - 1 Attachment - 2 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
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U.S. APPLICATION SERIAL NO. 88294777
MARK: AFFIRM
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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: The American Foundation for Firearm Inju ETC.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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EXAMINER’S AMENDMENT/PRIORITY ACTION
STRICT DEADLINE—TO AVOID ABANDONMENT OF THIS TRADEMARK APPLICATION, THE USPTO MUST RECEIVE A COMPLETE RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW. A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.
ISSUE/MAILING DATE: 4/23/2019
The Office records have been searched and no similar registered or pending mark has been found that would bar registration under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d) (2012). Trademark Manual of Examining Procedure § 704.02 (October 2018).
The undersigned examining attorney has reviewed the above-referenced application, in accordance with section 2.61 of the Trademark Rules of Practice, 37 C.F.R. § 2.61 (2018), and has determined the following, which was discussed in communication with Kevin Moss, Esq. on April 23, 2019.
Please note: Applicant is encouraged to contact the undersigned examining attorney to discuss informally this issue further.
Applicant filed this application on February 8, 2019, under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a) (2012), based on its use of the mark “AFFIRM,” to indicate the source of the service of “promoting charitable giving and funding to support nonpartisan, public health research, education and training of health care professionals to diminish the incidence and health consequences of gun violence.”
Promotional services are generally in International Class 35, including promoting the charities of others. See attached listings from the Trademark Acceptable Identifications of Goods and Services Manual. The record has been accordingly corrected to reclassify the services. 37 C.F.R. § 2.71; TMEP §§ 707.02, 1401.03(b).
Registration is refused, pursuant to Sections 1 and 45 of the Trademark Act, 15 U.S.C. §§ 1051, 1127 (2012), on the grounds that Applicant has not provided an acceptable specimen demonstrating use in commerce in connection with the identified services in this class. 15 U.S.C. §§ 1051(a), 1127; 37 C.F.R. §§ 2.34(a)(1)(iv), 2.56; TMEP §§ 904, 904.07(a). Under Sections 1(a) and 45 of the Trademark Act and Rule 2.56, a specimen showing such use is required in an application based on use of the mark in commerce. 15 U.S.C. §§ 1051(a), 1127; 37 C.F.R. §§ 2.34(a)(1)(iv), 2.56; TMEP §§ 904, 904.07(a), 1301.04.
To demonstrate proper mark usage, Section 45 requires that the specimen must show the mark “used or displayed in the sale or advertising of services,” in a manner that would be perceived by potential purchasers as identifying an applicant’s services and indicating their source. 15 U.S.C. § 1127; see 37 C.F.R. § 2.56(b); TMEP §§ 901.01, 904.03, 1301.04(a). Section 45 further defines “use in commerce” as “the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in the mark.”
“Where the mark is used in advertising the services, the specimen must show a direct association between the proposed mark and the services for which registration is sought.” In re DSM Pharm. Inc., 87 U.S.P.Q.2d 1623, 1624 (TTAB 2008); see In re Universal Oil Prods. Co., 476 F.2d 653, 655, 177 U.S.P.Q. 456, 457 (C.C.P.A. 1973) (“The requirement that a mark must be ‘used in the sale or advertising of services’ to be registered as a service mark is clear and specific. . . . The minimum requirement is some direct association between the offer of services and the mark sought to be registered therefor.”). “ ‘While the nature of the services does not need to be specified in the specimens, there must be something which creates in the mind of the purchaser an association between the mark and the service activity.’ ” In re Adair, 45 U.S.P.Q.2d 1211, 1215 (TTAB 1997). There must be sufficient reference to the services in the specimen to create this association. In re Monograms Am., Inc., 51 U.S.P.Q.2d 1317, 1318 (TTAB 1999); TMEP § 1301.04.
In support of use, Applicant has submitted a PDF image, which is described as a “screenshot of website depicting mark as used in connection with the applied-for services.” The specimen shows the proposed mark appear in direct association with the Class 36 services of administering monetary charitable contributions and fundraising services to support nonpartisan, public health research, education and training of health care professionals to diminish the incidence and health consequences of gun violence. The specimen screenshot details that Applicant “has built a coalition of clinicians and researchers” and seeks to “fund public health research of gun violence prevention.” The icon to “Donate Now” appears in on the main webpage and the About Us webpage. Thus, Applicant is not using the proposed mark to promote the charitable giving and funding services of others, but rather, the mark is the source identifier for charitable fundraising services.
Displaying the mark on a specimen is not sufficient; there must be a direct association between the mark and the identified services. The Trademark Act specifically prohibits the reserving of rights in a mark.
Based on examination, the specimen webpage does not show the mark in a manner that would be perceived by potential purchasers as identifying the listed Class 35 services and the mark does not act as a source indicator of these identified services. Consequently, the specimen is not acceptable to show use for the identified services in this class.
Applicant may respond to this refusal by satisfying one of the following for the 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, and (b) shows the mark in actual use in commerce for the identified services.
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 fees and filing requirements such as providing a specimen at a subsequent date.
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.
Examples of acceptable specimens for services are advertising and marketing materials, brochures, photographs of business signage and billboards, and website printouts that show the mark used in the actual sale, rendering, or advertising of the identified services. TMEP § 1301.04.
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/specimen.jsp.
The application has been AMENDED as indicated below. No prior approval or authorization from Applicant or Applicant’s attorney is required. TMEP § 707.02.
The application is amended to reclassify the identified services from International Class 36 to International Class 35. 37 C.F.R. § 2.71; TMEP §§ 707.02, 1401.03(b).
Please contact the undersigned attorney with any questions. Thank you for your cooperation and time regarding the foregoing issues.
Sincerely,
/Judy Helfman/
Attorney Advisor
Law Office 111
571/272-5892
judy.helfman@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.
