To: | Steel King Industries, Inc. (dockmpls@merchantgould.com) |
Subject: | U.S. Trademark Registration No. 2558079 - GUARD DAWG - 12598.6US01 |
Sent: | August 26, 2022 12:41:42 PM |
Sent As: | prg@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Owner’s Trademark Registration
U.S. Registration No. 2558079
Mark: GUARD DAWG
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Correspondence Address: |
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Owner: Steel King Industries, Inc.
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Reference/Docket No. 12598.6US01
Correspondence Email Address: |
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The USPTO must receive the owner’s response to this letter within the time period specified below. Respond using the Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears below.
Issue date: August 26, 2022
The Combined Section 8 Affidavit & Section 9 Renewal Application was received on March 8, 2022. The Section 9 portion of the combined filing can be granted. However, the Section 8 portion is not accepted for the reason(s) set forth below.
ISSUES PERTAINING TO SECTION 8 PORTION ONLY
I. SPECIMEN DEFICIENCY
Material that functions merely to tell prospective purchasers about the goods, or to promote the sale of the goods, is not acceptable to show trademark use. TMEP §904.04(b). Leaflets, handbills, brochures, advertising circulars and other advertising material, while normally acceptable for showing use in connection with services, generally are not acceptable specimens for showing trademark use in connection with 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), 1301.04.
A printed or web catalog, web page or similar specimen is acceptable to show trademark use as a display associated with the goods only if it includes the following: (1) a picture of the relevant goods or a textual description that identifies the actual features or inherent characteristics of the goods such that the goods are recognizable, (2) the mark appearing sufficiently near the picture or textual description of the goods so as to associate the mark with the goods, and (3) information necessary to order the goods (e.g., an order form or a phone number, mailing address, or e-mail address for placing orders) or a visible weblink to order the goods. See In re Sones, 590 F.3d at 1288-89, 93 USPQ2d at 1123-24; In re Genitope, 78 USPQ2d at 1822; In re Dell, 71 USPQ2d at 1727-29; Lands’ End, 797 F. Supp. at 513-14, 24 USPQ2d at 1316; TMEP §904.03(h). Without this necessary information, the specimen is mere advertising and is not acceptable to show use in commerce for goods. See, e.g., In re Osterberg, 83 USPQ2d 1220, 1222-24 (TTAB 2007); In re Genitope, 78 USPQ2d at 1822.
The owner may respond by submitting:
(1) A substitute specimen showing current use of the registered mark in commerce for each class of goods specified in the registration; 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 during the relevant period for filing the 10-year Section 8.” 37 C.F.R. §2.161(a)(7); TMEP §1604.12(c).
Examples of specimens. Electronic specimens may be an image, such as a photograph or scanned copy, of the physical specimen. Specimens for goods include an image of (1) the actual goods bearing the mark; (2) labels or tags shown attached to the goods or including informational matter that typically appears on a tag or label in use in commerce for these types of goods; (3) an actual container or packaging for the goods bearing the mark; or (4) a point-of-sale display showing the mark directly associated with the goods. See 37 C.F.R. §2.56(b)(1), (c); TMEP §904.03(a)-(m). A webpage specimen submitted as a display associated with the goods must show the mark in association with a picture or textual description of the goods and include information necessary for ordering the goods. See 37 C.F.R. §2.56(b)(1), (c); TMEP §904.03(i). Any webpage printout or screenshot submitted as a specimen must include the webpage’s URL and the date it was accessed or printed. 37 C.F.R. §2.56(c).
II. DECLARATION AND SIGNATURE
The owner was using the mark in commerce on or in connection with the goods and/or services identified in the registration for which use of the mark in commerce is claimed, as evidenced by the submitted specimen, during the relevant period for filing the 10-year Section 8.
The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statement may jeopardize the validity of this document, declares that s/he is properly authorized to execute this document on behalf of the owner, and all statements made of his/her own knowledge are true and that all statements made on information and belief are believed to be true.
__________________________
Signature of Authorized Person
__________________________
Type or Print Name
__________________________
Date
The following persons are properly authorized to sign a Section 8 Affidavit on behalf of the owner:
(1) A person with legal authority to bind the owner (e.g., a corporate officer or general partner);
(2) A person with firsthand knowledge of the facts and actual or implied authority to act on behalf of the owner; or
(3) An authorized attorney who has an actual written or verbal power of attorney or an implied power of attorney from the owner.
37 C.F.R. §§2.161(a)(2), 2.193(e)(1); TMEP §1604.08(a).
III. SIGNATURES ON RESPONSES
Responses to Office actions must be properly signed. 37 C.F.R. §§2.163(b), 2.193(e)(2); TMEP §611.03(b). When an owner is represented by an attorney, the attorney must sign the response. 37 C.F.R. §2.193(e)(2)(i); TMEP §611.03(b). The only attorneys who may sign responses and otherwise practice before the USPTO in trademark matters are (1) attorneys in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico and other federal territories and possessions of the United States; and (2) Canadian agents/attorneys reciprocally recognized by the USPTO’s Office of Enrollment and Discipline (OED) who are appointed in connection with a U.S.-licensed attorney. See 37 C.F.R. 2.17(a), 11.14(a), (c), (e). Attorneys who fail to meet these requirements, as well as non-attorneys, are generally not permitted to represent owners in trademark matters before the USPTO; and thus, they may not sign responses. See 5 U.S.C. §500(b), (d); 37 C.F.R. §11.14(a)-(c), (e); TMEP §§602, 602.02, 608.01.
Where an owner is represented by an attorney, and then later retains a different attorney from a different firm, the newly retained attorney may not sign responses until the owner files a new power and/or revocation of attorney. See 37 C.F.R. §2.18(a)(7); TMEP §604.03.
Where an owner is not represented by an attorney, the response must be signed by the individual owner or someone with legal authority to bind a juristic owner (e.g., a corporate officer or general partner). See 37 C.F.R. §2.193(e)(2)(ii); TMEP §§611.03(b), 611.06 et seq. In the case of joint owners, all must sign. 37 C.F.R. §2.193(e)(2)(ii); TMEP §611.06(a).
IV. RESPONSE GUIDELINES
DEFICIENCY SURCHARGE REQUIRED: The owner must submit a $100 deficiency surcharge with its response to this Office action. . 37 C.F.R. §§2.6, 2.164(a)(1); TMEP §1604.17(a).
How to respond. Click to file a Response to Post-Registration Office action.
Direct questions about this Office action to the Post Registration staff member below.
/Burns Jr, Glenn R/
Trademark Specialist
Phone: 571-272-0994
Fax: 571-273-0994
Glenn.Burns@USPTO.gov
RESPONSE GUIDANCE