United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Owner’s Trademark Registration
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U.S. Registration No. 3713467
Mark: ACROBAT
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Correspondence Address: |
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Owner: FOLEY FAMILY WINES, INC.
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Reference/Docket No. N/A
Correspondence Email Address: |
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OFFICE ACTION
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: January 3, 2020
The Combined Section 8 Affidavit & Section 9 Renewal Application was received on November 14, 2019. 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.
Specimen
A mock-up of a product or its packaging that has been digitally created or otherwise altered to include the mark does not show actual use of the mark in commerce with goods. Similarly, a mock-up of the display of business signage, such as a storefront or delivery van, that has been digitally created or otherwise altered to include the mark does not show actual use of the mark in commerce with services. See 15 U.S.C. §1127; TMEP §§904.04(a), 904.07(a), 1301.04(a); cf. In re Chica, Inc., 84 USPQ2d 1845, 1948 (TTAB 2007) (holding that “a mere drawing of the goods with an illustration of how the mark may be displayed” was not an acceptable specimen because it does not show actual use in commerce).
In this case, the mark on the label does not follow the contour of the bottle and the bottle has a dark wavy border around it.
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 and/or services 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. 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.
Declaration
The substitute specimen was in use in commerce 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.
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Signature of Authorized Person
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Type or Print Name
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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(b), 2.193(e)(1); TMEP §1604.08(a).
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).
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.
Ahmed, Deborah
/Deborah Ahmed/
Lead Trademark Specialist
Post Registration Division
Phone: 571-272-9122
Email: deborah.ahmed@uspto.gov
RESPONSE GUIDANCE