Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT OWNER’S TRADEMARK REGISTRATION

 

 

 

CLICK ON THE LINK BELOW TO RESPOND TO THIS LETTER AND SELECT FORM NUMBER 11:

 

 http://www.gov.uspto.report/trademarks/teas/reg_maintain.jsp

 

 

POST REGISTRATION OFFICE ACTION

 

 

ISSUE/MAILING DATE: 4/4/2018

U.S. Registration Number:  3403946

 

The Combined Section 8 Affidavit & Section 9 Renewal Application was received on March 22, 2018.  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.

 

I.                 Specimen Deficiencies

 

The owner of the registration provided a specimen with its Section 8 Affidavit; however, although the specimen is identified as a web page, it is unacceptable to show trademark use as a display associated with the goods because it fails to include the necessary ordering information/a weblink for ordering the goods and thus, appears to be mere advertising material.  See In re Sones, 590 F.3d 1282, 1288-89, 93 USPQ2d 1118, 1123-24 (Fed. Cir. 2009); In re Genitope Corp., 78 USPQ2d 1819, 1822 (TTAB 2006); In re Dell Inc., 71 USPQ2d 1725, 1727-29 (TTAB 2004); TMEP §904.03(h), (i); cf. Lands’ End, Inc. v. Manbeck, 797 F. Supp. 511, 513-14, 24 USPQ2d 1314, 1316 (E.D. Va. 1992). 

 

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. 

 

Therefore, the owner must submit the following:

 

(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(g); TMEP §1604.12(c).

 

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.

 

II.               Sample Declaration

 

The following statement and declaration under 37 C.F.R. §2.20 can be used to verify the Section 8 Affidavit, if properly signed and dated:

 

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

 

III.              Authorized Signatories

 

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(b), 2.193(e)(1); TMEP §1604.08(a).

 

IV.             Response Period

 

RESPONSE TIME DEADLINE:  A complete response must be received within 6 months from the issuance date of this Office action.  The owner must respond to all inquiries set forth in this Office action to avoid cancellation of the registration.  If a response is not received, the registration will be cancelled in its entirety.  37 C.F.R. §2.163(b)-(c); TMEP §1604.16.

 

DEFICIENCY SURCHARGE REQUIRED:  The owner must submit a $100 deficiency surcharge with its response to this Office action if the response is submitted online using the Trademark Electronic Application System (“TEAS”).  A $200 deficiency surcharge must be submitted if the response is submitted on paper.  37 C.F.R. §§2.6, 2.164(a)(1); TMEP §1604.17(a).

 

 

 

 

/Ajay R. David/

Ajay R. David

Trademark Specialist

Post Registration Division

Phone: 571-272-1565

Fax No: 571-273-1565

Email: ajay.david@uspto.gov

 

 

TO RESPOND TO THIS LETTER:  Use the Trademark Electronic Application System (TEAS) Response to Post-Registration Office action form number 11 at http://www.gov.uspto.report/trademarks/teas/reg_maintain.jsp.  Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the registration.  For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned specialist.  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 registration will be placed in the official registration record.

 

WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual owner or someone with legal authority to bind an owner (i.e., a corporate officer, a general partner, all joint owners). If an owner is represented by an attorney, the attorney must sign the response.

 

CHECK THE STATUS OF THE REGISTRATION:  To check the status of your registration at any time, visit the Office’s Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen.  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.