PR-Teas-Response to Post Reg Office Act

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form No Form Number (Rev 01/2012)

OMB No. 0651-0055 (Exp 10/31/2021)

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Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form No Form Number (Rev 01/2012)

OMB No. 0651-0055 (Exp 10/31/2021)

Response to Office Action for Post-Registration Matters

To the Commissioner for Trademarks:

The following is submitted for registration number. 3366320

FORM INFORMATION

In response to the Post-Registration Office Action issued on July 28, 2018, Registrant respectfully submits that the specimen submitted with the Combined Section 8 Affidavit and Section 9 Renewal Application on July 9, 2018 should be accepted as a legitimate example of use the RABBIT trademark in connection with the listed goods.  As stated in TMEP Section 904.03(i), a web page can be considered an electronic "display associated with the goods" if it: (1) contains a picture or textual description of the identified goods; (2) shows the mark in association with the goods; and (3) provides a means for ordering the identified goods.  The Trademark Specialist examining this case asserts that this specimen fails to include the necessary ordering information required under Item 3.

However, Registrant disagrees with this position, as it believes the specimen (attached as Exhibit A) meets all three requirements.  The submitted specimen clearly shows both the manufacturer's suggested retail price and provides 3 direct links marked "SHOP NOW" to the closest 3 authorized Volkswagen dealerships.  As an automobile manufacturer and retailer, Volkswagen vehicles and parts are sold through authorized, licensed dealerships.  Therefore, Registrant's centralized website offers the genuine parts for sale through a local Volkswagen dealership.  This is a common distribution channel in the automotive industry.  By clicking on the "SHOP NOW" links, the customer is directed to a list of the closest dealerships with the actual prices listed and an "Add to Cart" option for purchasing the vehicle part directly through each Volkswagen dealership.  (See Exhibit B for pages accessed through the direct links from the specimen.)

To provide guidance when submitting web sites as electronic displays, TMEP Section 904.03(i) provides a number of examples of web pages acceptable as specimens for goods.  TMEP Section 904.03(i)(C) contains Example 11, where the reasons for acceptance include the fact that "the "SHOP ONLINE" tab and the "SHOP" link indicate direct ordering via the web page."  Registrant contends that its submitted specimen is similar and the "SHOP NOW" buttons on the submitted specimen serve the same purpose as the "SHOP ONLINE" tab and the "SHOP" link.

The 904.03(i)(B)(2) also has a similar situation in Example 7 (KEEPING YOU COZY for jackets) with a product links and a "BUY ONLINE NOW!" instruction indicating that direct ordering is possible.  Registrant's "SHOP NOW" buttons serve the same purpose.

As further evidence of the acceptability of the specimen submitted with the Combined Section 8 Affidavit and Section 9 Renewal Application, Registrant also attaches as Exhibit C the specimen submitted with the Section 8 and Section 15 Affidavits on July 7, 2014 for this same matter, U.S. Trademark Registration No. 3366320.  This specimen was accepted by the U.S. Patent & Trademark Office and contains ordering information similar to the current specimen: the manufacturer’s suggested retail price and "Find Dealer" links to locate an authorized Volkswagen dealership carrying the requested part.  Registrant argues that the current specimen meets the same level of ordering information from the 2014 specimen and even improves on the availability for ordering by changing the direct link buttons to state the clearer "SHOP NOW" phrase to allow the customer to order the vehicle part.

Lastly, because Registrant believes the specimen submitted with the Combined Section 8 Affidavit and Section 9 Renewal Application on July 9, 2018 is acceptable as filed, the requested $100 deficiency surcharge is not being submitted with this response.

In summary, Registrant believes the current specimen contains the required ordering information and therefore should be accepted by the U.S. Patent & Trademark Office.  As a result, Registrant requests the acceptance of the Section 8 Affidavit filed for U.S. Trademark Registration No. 3366320.

SPECIMEN DESCRIPTION

Exhibits A-C containing the specimen as filed, screenshots of the direct links accessed through the "SHOP NOW" buttons and the specimen previously filed for maintenance of this registrationFORM FILE NAME(S)

Original PDF file:
Exhibit_A_3366320_RABBIT_2019024105355693.pdf
Converted PDF file(s) (2 pages)
Attachments-1
Attachments-2
Original PDF file:
Exhibit_B_3366320_RABBIT_201902410543775.pdf
Converted PDF file(s) (5 pages)
Attachments-1
Attachments-2
Attachments-3
Attachments-4
Attachments-5
Original PDF file:
Exhibit_C_3366320_RABBIT_2019024105412569.pdf
Converted PDF file(s) (11 pages)
Attachments-1
Attachments-2
Attachments-3
Attachments-4
Attachments-5
Attachments-6
Attachments-7
Attachments-8
Attachments-9
Attachments-10
Attachments-11 The filer has elected to bypass the checkbox indicating that a substitute specimen was in use in commerce during the relevant period for filing the 6-year or 10-year Section 8/71.Warning: If you are providing a substitute specimen and do not provide the required statement verifying use, upon review of your response, if it is determined that verification is required, another Office action will issue requiring this statement to complete your response.

SIGNATURE(S)
Declaration Signature
The signatory 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, submission, or any registration resulting therefrom, declares that the facts set forth above are true; all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.

Signature: /sas/      Date: 01/24/2019
Signatory's Name: Susan A. Smith
Signatory's Position: Attorney of record, DC Bar member
Signatory's Phone Number: 202-955-1500

Submission Signature
Signature: /sas/     Date: 01/24/2019
Signatory's Name: susan smith
Signatory's Position: attorney of record, dc bar
Signatory's Phone Number: 202-955-1500

        
Serial Number: 76657347
Internet Transmission Date: Thu Jan 24 11:44:26 EST 2019
TEAS Stamp: USPTO/TRS-XXX.XX.XXX.XXX-201901241144260
39654-3366320-20190124102211293105-N/A-N
/A-20190124102211293105