UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
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APPLICATION SERIAL NO. 76705489
MARK: OUR TV TURNING INTO RTV
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/teas/eTEASpageD.htm
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APPLICANT: FUJAREK ,GARY
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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STRICT DEADLINE TO RESPOND TO THIS LETTER
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.
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
NO CONFLICTING MARKS:
The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
UNCLEAR IF STANDARD CHARACTER DRAWING INTENDED:
A standard character drawing must show the applied-for mark depicted in Latin characters, Roman or Arabic numerals, with common punctuation or diacritical marks, with no design element or stylization of lettering/numbers, and no claim to any particular font, style, size or color. 37 C.F.R. §2.52(a); TMEP §807.03(a). A special form drawing can include stylization of lettering/numbers, as well as design elements. 37 C.F.R. §2.52(b); TMEP §807.04(a).
If a standard character drawing was intended, then applicant must submit the following statement: “The mark consists of standard characters without claim to any particular font style, size, or color.” 37 C.F.R. §2.52(a); TMEP §807.03(a). If a special form drawing was intended, then applicant must state so for the record and ensure that an accurate description of the mark is included in the record. See 37 C.F.R. §2.52(b); TMEP §§807.04 et seq.
A special form drawing, on the other hand, shows the mark in stylized letters and/or with a design element and provides protection for only that specific rendering. See 37 C.F.R. §2.52(b); TMEP §§807.04 et seq.
In this case, the mark contains a degree of stylization. If the applicant intended to submit a standard character drawing, the applicant must provide an amended drawing that does not contain any stylization.
If the applicant intended to submit a special form drawing, the applicant must re-designate the drawing as a special form drawing.
STANDARD CHARACTER DRAWING REQUIREMENTS:
A standard character drawing submitted on paper must comply with the following requirements:
(1) Depict the mark typed or made with a pen in black print on a white background;
(2) Depict all letters and words in the mark in Latin characters, and all numerals in Roman or Arabic numerals;
(3) Depict the mark to include only common punctuation or diacritical marks, as shown on the Office’s standard character set at http://teas.gov.uspto.report/standardCharacterSet.html, which sets forth a list of all the acceptable standard characters;
(4) Depict the mark so as not to include a design element or stylization of lettering and/or numbers in the mark; and
(5) Include a standard character claim using the following format: “The mark consists of standard characters without claim to any particular font style, size, or color.”
37 C.F.R. §§2.52(a), 2.54(d)-(e); see TMEP §§807.03(a)-(b), 807.06 et seq.
In addition to the above, the Office prefers that the drawing be on a separate sheet of non-shiny, white paper that is 8 to 8.5 inches wide and 11 to 11.69 inches long (20.3 to 21.6 cm wide and 27.9 to 29.7 cm long). One of the shorter sides of the sheet should be the top edge and include the caption “DRAWING PAGE.” 37 C.F.R. §2.54(a)-(c); TMEP §807.06(a).
If the mark includes characters that are not in the standard character set, the drawing will be treated as a special form drawing. TMEP §807.03(b).
Or
A standard character drawing submitted electronically must comply with the following requirements:
(1) Depict the mark in black print on a white background;
(2) Depict all letters and words in the mark in Latin characters, and all numerals in Roman or Arabic numerals;
(3) Depict the mark to include only common punctuation or diacritical marks, as shown on the Office’s standard character set at http://teas.gov.uspto.report/standardCharacterSet.html, which sets forth a list of all the acceptable standard characters;
(4) Depict the mark so as not to include a design element or stylization of lettering and/or numbers in the mark; and
(5) Include a standard character claim using the following format: “The mark consists of standard characters without claim to any particular font style, size, or color.”
37 C.F.R. §2.52(a); see TMEP §807.03(a)-(b).
When submitting a standard character drawing via the Trademark Electronic Application System (TEAS), applicant must identify the mark type as “standard characters” and enter the mark in the appropriate data field. TMEP §807.05(a); see 37 C.F.R. §2.53(a). If all the characters in the mark are in the standard character set, the Office will create an acceptable digitized image of the mark and automatically generate a standard character claim. TMEP §807.05(a). If the mark includes characters that are not in the standard character set, the drawing will be treated as a special form drawing. TMEP §807.03(b).
SPECIAL FORM DRAWING REQUIREMENTS:
A special form drawing must comply with the following paper requirements:
(1) Depict the mark in black and white, unless the mark is in color. If color is a feature of the mark, applicant must depict the mark in color, and provide both a statement identifying the colors claimed and a statement describing where the colors appear in the mark.
(2) Depict the mark using a pen or a process that will provide high definition when copied. A photolithographic, printer’s proof copy, or other high quality reproduction of the mark may be used. All lines must be clean, sharp and solid, and must not be fine or crowded.; and
(3) Depict the mark no larger than 3.15 inches (8 cm) high by 3.15 inches (8 cm) wide.
37 C.F.R. §§2.52(b), (b)(1), 2.54(b), (d)-(e); see TMEP §§807.04(a), 807.06(a), 807.07(a) et seq.
For marks not depicted in color, the mark itself should be depicted in black on a white background. 37 C.F.R. §2.52(b).
Further, the Office prefers that the drawing be on a separate sheet of non-shiny, white paper that is 8 to 8.5 inches wide and 11 to 11.69 inches long (20.3 to 21.6 cm wide and 27.9 to 29.7 cm long). One of the shorter sides of the sheet should be the top edge and include the caption “DRAWING PAGE.” 37 C.F.R. §2.54(a)-(c); TMEP §807.06(a).
The Office strictly enforces the drawing requirements.
Or
(1) The mark should appear in black on a white background, unless the mark is in color. If color is a feature of the mark, applicant must depict the mark in color, and provide both a statement identifying the colors claimed and a statement describing where the colors appear in the mark.;
(2) All lines in the image must be clean, sharp and solid, and not fine or crowded, and produce a high-quality image when copied.; and
(3) The digitized mark image must be in jpg format, formatted at no less than 300 dots per inch and no more than 350 dots per inch.
37 C.F.R. §§2.52(b), (b)(1), 2.53(b)-(c); TMEP §§807.04(a), 807.05(b)-(c), 807.07(a)(i)-(a)(ii).
In addition to the above, the Office recommends that the digitized image of the mark have a length and width of no smaller than 250 pixels and no larger than 944 pixels.
DRAWING DOES NOT REPRODUCE SATISFACTORILY:
If applicant submits a new drawing in the form of a digitized image, it must be in jpg format. The Office recommends that the digitized image have a length and width no smaller than 250 pixels and no larger than 944 pixels. 37 C.F.R. §2.53(c); TMEP §807.05(c).
Amendments or changes to the applied-for mark in a substitute drawing will not be accepted if the changes would materially alter the mark. 37 C.F.R. §2.72; see TMEP §§807.13 et seq., 807.14.
Specifically, the attached evidence from Onelook.com shows that the acronym TV refers to television which is an electronic device for receiving and reproducing the images and sounds of a combined audio and video signal; the image, sound, or content of a combined audio and video broadcast; the industry concerned with the making and broadcasting of programs combining images and sounds. See attached definitions.
The acronym RTV means real time video and real time video is the transmission of live video. See attached definitions.
The following is the standard format used by the Office:
No claim is made to the exclusive right to use “TV” and “RTV” apart from the mark as shown.
TMEP §1213.08(a)(i); see In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).
IDENTIFICATION OF SERVICES AND CLASSIFICATION:
Applicant may adopt the following identification, if accurate:
Broadcasting services, namely, _______ (the applicant must specify the items, for instance, television and radio broadcasting services; video broadcasting services over television, the Internet or other communications network featuring the uploaded, posted and tagged videos of others), in International Class 38.
On-line journals, namely, blogs featuring _______ (the applicant must specify the subject matter for instance, sports), in International Class 41.
Creating and maintaining blogs for others; providing a web site featuring temporary use of non-downloadable software allowing web site users to upload, post and display online videos for sharing with other for entertainment purposes, via a global computer network, mobile phones, radio or television, in International Class 42.
For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.
REQUIREMENTS OF A COMBINED APPLICATION:
(1) LIST GOODS AND/OR SERVICES BY INTERNATIONAL CLASS: Applicant must list the goods and/or services by international class;
(2) PROVIDE FEES FOR ALL INTERNATIONAL CLASSES: Applicant must submit an application filing fee for each international class of goods and/or services not covered by the fee(s) already paid (confirm current fee information at http://www.uspto.gov, click on “View Fee Schedule” under the column titled “Trademarks”); and
(3) SUBMIT REQUIRED STATEMENTS AND EVIDENCE: For each international class of goods and/or services, applicant must also submit the following:
(a) DATES OF USE: Dates of first use of the mark anywhere and dates of first use of the mark in commerce, or a statement that the dates of use in the initial application apply to that class. The dates of use, both anywhere and in commerce, must be at least as early as the filing date of the application.;
(b) SPECIMEN: One specimen showing the mark in use in commerce for each international class of goods and/or services. Applicant must have used the specimen in commerce at least as early as the filing date of the application. If a single specimen supports multiple international classes, applicant should indicate which classes the specimen supports. Examples of specimens for services are signs, photographs, brochures, website printouts, or advertisements that show the mark used in the actual sale or advertising of the services. See TMEP §§1301.04 et seq.;
(c) STATEMENT: The following statement: “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.”; and
(d) VERIFICATION: Applicant must verify the statements in 3(a) and 3(c) (above) in an affidavit or signed declaration under 37 C.F.R. §2.20. Verification is not required where (1) the dates of use for the added class are stated to be the same as the dates of use specified in the initial application, and (2) the original specimens are acceptable for the added class(es).
See 15 U.S.C. §§1051(a), 1112, 1127; 37 C.F.R. §§2.32(a)(5), 2.34(a)(1), 2.56(a), 2.71(c), 2.86(a), 2.193(e)(1); TMEP §§1403.01, 1403.02(c).
The filing fees for adding classes to an application are as follows:
(1) $325 per class, when the fees are submitted with an electronic response filed online at http://www.gov.uspto.report/teas/index.html, via the Trademark Electronic Application System (TEAS); or
(2) $375 per class, when the fees are submitted with a paper response.
37 C.F.R. §2.6(a)(1)(i)-(a)(1)(ii); TMEP §§810, 1403.02(c).
MARK DIFFERS ON DRAWING AND SPECIMEN:
An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each class of goods and/or services. 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). The mark on the drawing must be a substantially exact representation of the mark on the specimen. 37 C.F.R. §2.51(a); TMEP §807.12(a); see 37 C.F.R. §2.72(a)(1).
The drawing of the 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. However, amending the mark in the drawing to conform to the mark on the specimen would be a material alteration in this case because the mark on the specimen creates a different commercial impression from the mark on the drawing. Specifically, because the deletion of the wording “TURNING INTO RTV” would change the commercial impression of the original mark and this deletion would therefore constitute a material alteration of the original mark.
Therefore, applicant must submit the following:
(1) A substitute specimen showing use in commerce of the mark on the drawing. See TMEP §807.12(a).; 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 at least as early as the filing date of the application.” See 37 C.F.R. §§2.59(a), 2.193(e)(1); TMEP §904.05. If submitting a specimen requires an amendment to the dates of use, applicant must also verify the amended dates. 37 C.F.R. §2.71(c); TMEP §904.05.
Examples of specimens for services are signs, photographs, brochures, website printouts or advertisements that show the mark used in the actual sale or advertising of the services. See TMEP §§1301.04 et seq.
If applicant cannot satisfy the above requirements, applicant may amend the application from a use in commerce basis under Trademark Act Section 1(a) to an intent to use basis under Section 1(b), for which no specimen is required. See TMEP §806.03(c). However, if applicant amends the basis to Section 1(b), registration will not be granted until applicant later amends the application back to use in commerce by filing an acceptable allegation of use with a proper specimen. See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103.
To amend to Section 1(b), applicant must submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “Applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods and/or services listed in the application as of the filing date of the application.” 37 C.F.R. §2.34(a)(2); TMEP §806.01(b); see 15 U.S.C. §1051(b); 37 C.F.R. §§2.35(b)(1), 2.193(e)(1).
Pending receipt of a proper response, registration is refused because the specimen does not show the applied-for mark in use in commerce as a trademark and/or service mark. 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).
If applicant responds to this Office action online via the Trademark Electronic Application System (TEAS), applicant should provide a substitute specimen as follows: (1) answer “yes” to the TEAS response form wizard question to “submit a new or substitute specimen;” (2) attach a jpg or pdf file of the substitute specimen; and (3) select the statement that “The substitute specimen(s) was in use in commerce at least as early as the filing date of the application.” However, if applicant is responding by amending the application to a Section 1(b) filing basis, applicant should do the following: (1) answer “yes” to the TEAS response form wizard question to “change filing basis;” (2) uncheck the box for “Filing Basis Section 1(a);” and (3) check the box for “Filing Basis Section 1(b).” Please note that these steps appear on different pages of the TEAS response form.
Whether submitting a substitute specimen or amending the filing basis to Section 1(b), applicant must also personally sign or personally enter his/her electronic signature and date after the declaration at the end of the TEAS response form. See 37 C.F.R. §§2.34(a)(2), 2.59(a), 2.193(a), (c)-(d), (e)(1); TMEP §§611.01(c), 804.01(b).
If applicant experiences difficulty in submitting the required substitute specimen, supporting statement and/or declaration, or changing the filing basis, please e-mail TEAS@uspto.gov for technical assistance regarding the TEAS response form.
If applicant responds to this Office action on paper, via regular mail, applicant may provide a verified substitute specimen by checking the first statement below, personally signing and dating the declaration appearing below the statement, and submitting a substitute specimen showing the applied-for mark in use in commerce. See 37 C.F.R. §§2.20, 2.59(a), 2.193(a)(1), (d), (e)(1); TMEP §§804.01(b), 904.05. If applicant is responding by amending the application to a Section 1(b) filing basis, applicant may check the second statement below, and personally sign and date the declaration appearing below the statement. See 37 C.F.R. §§2.20, 2.34(a)(2), 2.193(a)(1), (d), (e)(1); TMEP §§804.01(b), 806.03(c).
q The substitute specimen was in use in commerce at least as early as the filing date of the application.
q Applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods and/or services listed in the application as of the filing date of the application.
The undersigned 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 or document or any registration resulting therefrom, declares that all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.
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(Date)
DATE OF FIRST USE ANYWHERE OMITTED:
Therefore, applicant must specify the date of first use of the mark anywhere. If the date of first use anywhere differs from the date of first use in commerce, applicant must verify the date of first use anywhere with an affidavit or signed declaration under 37 C.F.R. §2.20. See 37 C.F.R. §§2.71(c), 2.193(e)(1); TMEP §903.04. However, if the date of first use anywhere is the same as the date of first use in commerce, applicant need not verify the date of first use anywhere. TMEP §903.04.
RESPONSE:
Applicant may wish to hire an attorney to assist in prosecuting this application because of the legal technicalities involved. The Office, however, cannot aid in the selection of an attorney. 37 C.F.R. §2.11. Applicant may wish to consult a local telephone directory for a listing of attorneys specializing in trademark or intellectual property law, or seek guidance from a local bar association attorney-referral service.
If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end, the trademark will fail to register, and the application fee will not be refunded. See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a), 2.209(a); TMEP §§405.04, 718.01, 718.02. Where the application has been abandoned for failure to respond to an Office action, applicant’s only option would be to file a timely petition to revive the application, which, if granted, would allow the application to return to live status. See 37 C.F.R. §2.66; TMEP §1714. There is a $100 fee for such petitions. See 37 C.F.R. §§2.6, 2.66(b)(1).
To expedite prosecution of the application, applicant is encouraged to file its response to this Office action online via the Trademark Electronic Application System (TEAS), which is available at http://www.gov.uspto.report/teas/index.html. If applicant has technical questions about the TEAS response to Office action form, applicant can review the electronic filing tips available online at http://www.gov.uspto.report/teas/eFilingTips.htm and email technical questions to TEAS@uspto.gov.
Or
I hereby certify that this correspondence is being deposited with the United States Postal Service with sufficient postage as first class mail in an envelope addressed to: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA, 22313-1451, on the date below.
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(Signature)
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(Typed or Printed Name of Person Signing Certificate)
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(Date)
If applicant has questions about the application or this Office action, please telephone the assigned trademark examining attorney at the telephone number below.
/Marlene D. Bell/
Marlene D. Bell
Law Office 105
Trademark Examining Attorney
(571) 272-9291
TO RESPOND TO THIS LETTER: Use the Trademark Electronic Application System (TEAS) response form at http://teasroa.gov.uspto.report/roa/. Please wait 48-72 hours from the issue/mailing date before using 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 examining attorney. Do not respond to this Office action by e-mail; the USPTO does not accept e-mailed responses.
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 Trademark Applications and Registrations Retrieval (TARR) at http://tarr.gov.uspto.report/. Please keep a copy of the complete TARR screen. If TARR shows no change for more than six months, 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/teas/eTEASpageE.htm.