UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

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.

 

ISSUE/MAILING DATE: 7/25/2013

 

THIS IS A FINAL ACTION.

 

 

This Office action is in response to applicant’s communication filed on June 13, 2013. The application was previously refused registration because the mark failed to function as at trademark. In addition, applicant was advised that the mark differed between the drawing and specimen, that a new drawing was required and that the identification of goods was incomplete. Applicant responded by submitting a specimen featuring the mark used as advertising of applicant’s goods. This specimen is unacceptable in form. Therefore, the prior registration is made final. In addition, applicant did not submit a specimen that features a mark that matches the mark in the drawing, a new drawing with extraneous matter deleted or a complete identification of goods. For the reasons set forth below, the refusal is now made FINAL under Trademark Act Sections 1, 2 and 45 for failure to function as a trademark as used on the specimen(s) of record.  See 15 U.S.C. §§1051, 1052, 1127; 37 C.F.R. §2.64(a).  In addition, the following requirements are now made FINAL:  1) specimen that features a mark that matches the mark in the drawing; 2) new drawing with extraneous matter deleted; and 3) complete identification of goods.  See37 C.F.R. §2.64(a).

 

Mark Identifies Design of Character  -- Failure to Function as Trademark

The stated refusal refers to International Class 9 only and does not bar registration in the other class.

 

Registration is refused because the applied-for mark, as used on the specimen of record, identifies only a particular character in a creative work; it does not function as a trademark to identify and distinguish applicant’s goods from those of others and to indicate the source of applicant’s goods.  Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051-1052, 1127; see In re Caserta, 46 USPQ2d 1088 (TTAB 1998); TMEP §§904.07(b), 1202.10.

 

A design of a character is registrable as a trademark only where the record shows that it is used in a manner that would be perceived by consumers as identifying the goods in addition to identifying the character.  See In re Hechinger Inv. Co. of Del., 24 USPQ2d 1053, 1056 (TTAB 1991); TMEP §1202.10.  In this case, the specimen shows the applied-for mark used only to identify a character and not as a trademark for applicant’s goods because it is merely a character design featured in the motion picture films, but does not function as a source identifier of applicant’s goods.

 

Applicant may respond to this refusal by submitting the following:

 

(1)  A substitute specimen showing the mark in use in commerce for the goods specified in the statement of use; 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 prior to the expiration of the time allowed applicant for filing a statement of use.”  37 C.F.R. §2.59(b)(2); TMEP §904.05; see 37 C.F.R. §2.193(e)(1).  If submitting a substitute 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 goods are tags, labels, instruction manuals, containers, photographs that show the mark on the goods or packaging, or displays associated with the goods at their point of sale.  See TMEP §§904.03 et seq.

 

Applicant may not withdraw the statement of use.  37 C.F.R. §2.88(g); TMEP §1109.17.

 

To submit a verified substitute specimen online via the Trademark Electronic Application System (TEAS), applicant should do the following:  (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; (3) select the statement that “The substitute specimen(s) was in use in commerce prior to the expiration of the deadline for filing the statement of use.”; and (4) sign personally or enter personally his/her electronic signature, name in printed or typed form, and date after the declaration at the end of the TEAS response form.  See 37 C.F.R. §§2.59(b)(2), 2.193(a), (c)-(d), (e)(1); TMEP §§611.01(c), 804.01(b).  Please note that these steps appear on different pages of the TEAS response form. 

 

If applicant experiences difficulty in submitting the required substitute specimen, supporting statement and/or declaration, please e-mail TEAS@uspto.gov for technical assistance regarding the TEAS response form.

 

 

Response Option for Partial Refusal

Applicant may respond to the stated refusal by submitting evidence and arguments against the refusal.  In addition, applicant may respond by doing one of the following:

 

(1)        Deleting the class to which the refusal pertains;

 

(2)        Filing a request to divide out the goods and/or services that have not been refused registration, so that the mark may proceed toward publication for opposition in the class to which the refusal does not pertain.  See 37 C.F.R. §2.87.  See generally TMEP §§1110 et seq., (regarding the requirements for filing a request to divide).  If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to all outstanding issues in this Office action, including the refusal.  37 C.F.R. §2.87(e).; or

 

(3)        Amending the basis for that class, if appropriate.  TMEP §806.03(h).  (The basis cannot be changed for applications filed under Trademark Act Section 66(a).  TMEP §1904.01(a).)

 

 

Substitute Specimen Requirement

Applicant was repeatedly previously advised that the mark differed between the drawing and specimen. Moreover, the applicant was advised that the mark failed to function as a trademark because it identified a character. In response, applicant submitted a screenshot of advertising of applicant’s goods. The specimen is not acceptable to show use in commerce of the applied-for mark because it consists of advertising material.  Advertising materials, such as leaflets, brochures, and circulars, which function merely to tell prospective purchasers about the goods, or promote the sale of the goods, are generally 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. 

 

Examples of specimens normally acceptable 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.  Webpages are also acceptable specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods.  TMEP §904.03(i). 

 

An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of goods identified in the statement of use.  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). 

 

Therefore, applicant must submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce prior to the expiration of the deadline for filing the statement of use and (b) shows the mark in actual use in commerce for the goods identified in the statement of use.  Applicant, however, may not withdraw the statement of use.  See 37 C.F.R. §2.88(g); TMEP §1109.17.

 

The refusal of registration based on the failure to provide a specimen that shows the applied-for mark in use in commerce as a trademark and/or service mark is now made final.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.56(a), 2.64(a), 2.88(b)(2); TMEP §§904, 904.07(a).

 

 

For more information about this refusal and instructions on how to submit a verified “substitute” specimen online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/specimen.jsp.

 

Mark Differs between Drawing and Specimen in Class 9

The mark on the specimen disagrees with the mark on the drawing.  In this case, the specimen displays the mark in various positions, none of which match the mark in the drawing where the alien figure has its right arm raised and the wording “TING” appears to the bottom right.

 

A statement of use must include a specimen showing the applied-for mark in use in commerce for each class of goods and/or services specified in the statement of use.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.56(a), 2.88(b)(2); TMEP §§904, 1109.09(b).  The mark on the drawing must be a substantially exact representation of the mark as used on the specimen.  37 C.F.R. §2.51(b); TMEP §807.12(a); see 37 C.F.R. §2.72(b)(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), (b)(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, each rendition of the mark featured in the specimen for Class 41 features the alien figure in different positions, none of which match the drawing or feature the wording “TING” to the bottom right. While the position of the alien figure is not material, the wording “TING” is material and must be present in the depiction of the mark featured in the specimen.

 

Therefore, applicant must submit the following:

 

(1)  A substitute specimen showing use in commerce of the mark on the drawing.  See 37 C.F.R. §2.59(b)(1); TMEP §904.05.; 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 prior to the expiration of the deadline for filing the statement of use.”  See 37 C.F.R. §§2.59(b)(2), 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 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.  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.

 

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. §§2.56(a), 2.88(b)(2); TMEP §§904, 904.07(a).

 

Applicant may not withdraw the statement of use.  37 C.F.R. §2.88(g); TMEP §1109.17.

 

 

New Drawing Required

Applicant must submit a new drawing showing the wording at the top and bottom of the page deleted from the mark because it is merely informational matter relating to the website from which it was copied and date it was printed.  This matter is not part of the mark.  See TMEP §§807.02, 807.14(a).

 

A special form drawing must show the mark (1) in black on a white background, if color is not a feature of the mark, or (2) in color on a white background, if color is a feature of the mark.  37 C.F.R. §2.52(b); see TMEP §807.04.  In addition, the mark must be shown clearly so as to produce a high quality image when copied; all lines in the drawing must be clean, sharp, solid, and not fine or crowded.  See 37 C.F.R. §§2.52, 2.53(c), 2.54(e); TMEP §807.04(a).

 

To submit a new drawing via the Trademark Electronic Application System (TEAS), applicant must use the response form and follow the instructions regarding submission of a drawing.  TMEP §807.05(b); see 37 C.F.R. §2.53(b).  An applicant must submit a drawing via TEAS in jpg format, and the USPTO recommends a digitized image with 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).

 

For drawings submitted on paper, the paper should be approximately 8.5 inches wide by 11 inches long, white, non-shiny, and include the caption “DRAWING PAGE” at the top.  37 C.F.R. §2.54(a)-(c); TMEP §807.06(a).  The mark in the drawing must appear no larger than 3.15 inches (8 cm) high by 3.15 inches (8 cm) wide.  37 C.F.R. §2.54(b); TMEP §807.06(a).  Further, the drawing must be made with ink or by a process that will provide a high definition when scanned.  37 C.F.R. §2.54(e); TMEP §807.06(a).  A photolithographic, printer’s proof copy, or other high-quality reproduction of the mark may be used.  37 C.F.R. §2.54(e); TMEP §807.06(a).

 

Identification of Goods Amendment Not Accepted for Class 9

THIS PARTIAL REQUIREMENT APPLIES TO CLASS 9 ONLY

 

Applicant attempted to amend the identification of goods from “Motion picture films about a caveman character "JUMA" and an alien character “TING"” to “Motion picture films about a caveman character "JUMA" and an alien character". This amendment is unacceptable because the alien character name has been deleted.

 

Thus, the previous identification of goods remains operative. In addition, applicant should note that it is not required to amend its identification of goods at this point. Applicant has previously submitted amendments of the identification of goods when it was not required, thus raising the identification of goods issue repeatedly.

Complete Response to FINAL Action Required – Partial Abandonment Advisory

Applicant must respond within six months of the date of issuance of this final Office action or the following class to which the final refusal(s) and/or requirement(s) apply will be deleted from the application by Examiner’s Amendment:  International Class 9.  37 C.F.R. §2.65(a); see 15 U.S.C. §1062(b).

 

The application will then proceed for the following class: International Class 41. 

 

Applicant may respond by providing one or both of the following:

 

(1)  A response that fully satisfies all outstanding requirements;

 

(2)  An appeal to the Trademark Trial and Appeal Board, with the appeal fee of $100 per class.

 

37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.

 

In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues.  37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters).  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §2.191; TMEP §§304.01-.02, 709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

 

 

 

 

/Julie Thomas Veppumthara/

Trademark Examining Attorney

Law Office 107

Phone: 571-272-1582

Email: julie.veppumthara@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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 7/25/2013 FOR U.S. APPLICATION SERIAL NO. 77983193

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 7/25/2013 (or sooner if specified in the Office action).  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System (TEAS) response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.