Offc Action Outgoing

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:

OPEN APPLICATION ISSUES THAT MUST BE ADDRESSED IN RESPONSE TO OFFICE ACTION:

The following are the open application issues that the applicant must address in order to have a complete response to this Office action:

-Requirement for Submission of an Acceptable Specimen of Use

-Requirement for Clarification of Identification Language

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The assigned trademark attorney has reviewed the referenced application and has determined the following:

Search

The Office records have been searched and there are no similar registered or pending marks that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02. In order to pursue registration, however, the applicant must respond to the following requirements.

Requirement for Submission of an Acceptable Specimen of Use

The specimen of record is not acceptable because it does not show the applied-for mark used in connection with any of the goods specified in the application. The applicant identifies its goods as “metal safety gates,” however, the goods pictured in the specimen of record are “gate extensions.” Thus the identified goods are not shown in the specimen of record, making it unacceptable to show use of the proposed mark in commerce for the identified goods in this case.

Additionally, even if the identified goods did appear on the web page of record, the specimen is not acceptable to show trademark use as a display associated with the goods because it fails to include a weblink for ordering the goods and thus, appears to be mere advertising material. See In re Sones, 590 F.3d 1282, 1286-89, 93 USPQ2d 1118, 1122-24 (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.

However, a web catalog, web page, or similar specimen, which is otherwise a form of advertising, is acceptable to show trademark use as a display associated with the goods if it includes (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 offer to accept orders via phone or e-mail) or a visible weblink to order the goods. See In re Sones, 590 F.3d at 1286-89, 93 USPQ2d at 1122-24; In re Genitope, 78 USPQ2d at 1822; In re Dell, 71 USPQ2d at 1727-29; TMEP §904.03(h), (i); cf. In re MediaShare, 43 USPQ2d at 1305-07; Lands’ End, 797 F. Supp. at 513-14, 24 USPQ2d at 1316. 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.

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. 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). Section 45 requires use of the mark “on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto.” 15 U.S.C. §1127; see 37 C.F.R. §2.56(b)(1); TMEP §§904.03, 904.04(b), (c).

Therefore, applicant must submit the following:

(1) A substitute specimen showing the mark in use in commerce for each class of goods specified in the application; 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.” 37 C.F.R. §2.59(a); 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, or photographs that show the mark on the actual goods or packaging. See TMEP §§904.03 et seq.

If applicant cannot satisfy the above requirements, applicant may amend the application from a use in commerce basis under 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 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. 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).

Requirement for Clarification of Identification of Goods

The wording “metal safety gates” in the identification of goods must be clarified because it is indefinite as to the intended use or purpose for the goods. See TMEP §§1402.01, 1402.03.

The applicant may substitute the following wording in International Class 006, if accurate:

“Metal safety gates for {specify intended use, e.g., babies, children and pets; swimming pool fencing}.”

Please note that parentheses are not acceptable in the identification. TMEP §1402.12. Where indicated “{specify … },” the examining attorney has merely suggested ways to cure the indefiniteness of the identification. The applicant must list the goods without parentheses.

The following is a sufficiently definite identification of the goods recited in this application that the applicant may choose to adopt, if accurate:

“Metal safety gates for babies, children and pets” in International Class 006.

For assistance with identifying and classifying goods in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.

An applicant may amend an identification of goods only to clarify or limit the goods; adding to or broadening the scope of the goods is not permitted. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07 et seq.

If applicant has any questions about its application or needs assistance in responding to this Office Action please telephone the assigned trademark examining attorney directly at the number listed below.

/Amy C. Kean/

Trademark Attorney, Law Office 113

U.S. Patent & Trademark Office

Amy.Kean@USPTO.gov

Phone: 571-272-8854

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 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 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.