Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Owner’s Trademark Registration

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:  October 23, 2020

The Section 8 Affidavit, filed on September 24, 2020, is not accepted for the reason(s) set forth below.

Acceptable Specimen Required

The specimen submitted in support of the Section 8 Affidavit is unacceptable because the specimen appears to consist of a digitally created or altered image, or mock-up of the intended depiction of the mark on the goods or their packaging. A Section 8 Affidavit must include a specimen showing current actual use of the mark for each class of goods.  15 U.S.C. §1058(b); §37 C.F.R. 2.161(g). 

An image of a product or packaging that has been digitally created or altered to include the mark or a mockup of how the mark may be displayed on the product or packaging is not a proper specimen for goods because it does not show actual use of the mark in commerce.  See 15 U.S.C. §1127; 37 C.F.R. §2.56(c); TMEP §904.04(a). 

The mark appears to have been digitally added to an existing image. This is evident from the pixelation surrounding the image and the different texture of the wording of the mark compared to the surrounding area. Even if the image was not digitally altered, the image appears to show a mock-up of how the goods will be sold and not used on the goods in actual sale in commerce. Therefore, the submitted specimen cannot be accepted.

The owner may respond by submitting:

(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 6-year Section 8.”  37 C.F.R. §2.161(g); TMEP §1604.12(c).

Examples of specimens.  Electronic specimens may be an image, such as a photograph or scanned copy, of the physical specimen. Specimens for goods include an image of (1) the actual goods bearing the mark; (2) labels or tags shown attached to the goods or including informational matter that typically appears on a tag or label in use in commerce for these types of goods; (3) an actual container or packaging for the goods bearing the mark; or (4) a point-of-sale display showing the mark directly associated with the goods.  See 37 C.F.R. §2.56(b)(1), (c); TMEP §904.03(a)-(m).  A webpage specimen submitted as a display associated with the goods must show the mark in association with a picture or textual description of the goods and include information necessary for ordering the goods.  See 37 C.F.R. §2.56(b)(1), (c); TMEP §904.03(i). 

Specimens for services must show a direct association between the mark and the services and include:  (1) copies of advertising and marketing material, (2) a photograph of business signage or billboards, or (3) materials showing the mark in the sale, rendering, or advertising of the services.  See 37 C.F.R. §2.56(b)(2), (c); TMEP §1301.04(a), (h)(iv)(C). 

Any webpage printout or screenshot submitted as a specimen, whether for goods or services, must include the webpage’s URL and the date it was accessed or printed.  37 C.F.R. §2.56(c).

In addition to the issues raised above, the owner must respond to the audit explained below.

Registration Selected for Audit

The USPTO is performing random audits of U.S. trademark registrations to assess and promote the accuracy and integrity of the trademark register.  See 37 C.F.R. §§2.161(h), 7.37(h). This registration has been randomly selected for audit to determine whether the mark is in use with all of the goods identified in the declaration of use submitted to maintain the registration. 

Detailed information regarding the audit program is provided on the following webpage – http://www.gov.uspto.report/trademarks-maintaining-trademark-registration/post-registration-audit-program.

To comply with the audit, the owner must submit proof of use of the registered mark for two additional goods per class.  Id. 

Specifically, the owner must submit the following:

(1)   Proof of current use of the registered mark in commerce for the following goods:

“Mobile phones” in International Class 9.

“Computer software to enable the transmission of photographs to mobile telephones” in International Class 9.

*Please see warning below regarding a request to delete audited goods*

(2)   The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “The owner/holder was using the mark in commerce on or in connection with the goods and/or services identified in the registration for which use of the mark in commerce is claimed, as evidenced by the submitted proof of use, during the relevant period for filing the affidavit of use.”  37 C.F.R. §§2.161(h), 7.37(h).

Additionally, the owner must identify the corresponding goods supported by each item submitted as proof of use.  See id. 

Examples of proof of use.  Electronic proof of use may be an actual image, such as a photograph, scanned copy, or screen capture, of the physical item. Acceptable proof of use for goods includes the mark shown on the actual goods or packaging, or displays associated with the actual goods at their point of sale.  Tags or labels must be shown affixed to the goods or must consist of actual tags or labels that identify the specific goods on which they are used and include informational matter that typically appears on a tag or label in use in commerce for these types of goods.  Similarly, a package must show or identify the goods therein.  A webpage submitted as a display associated with the goods must show the mark in association with a picture or textual description of the goods and include information necessary for ordering the goods.   

Any webpage printout or screenshot submitted as a specimen, whether for goods or services, must include the webpage’s URL and the date it was accessed or printed. 37 C.F.R. §2.56(c).

If proof of use for the requested goods is unavailable, the identified goods and any other goods not currently in use should be deleted from the registration. Please see the WARNING below for the possible consequence of deleting any goods identified for audit.

Form Declaration

Please note that the below statement verifying proof of use is slightly different than the standard substitute specimen statement.

The following statement and declaration under 37 C.F.R. §2.20 can be used to verify the use of the mark as evidenced by the item(s) submitted as proof of use, if properly signed and dated:

The owner was using the mark in commerce on or in connection with the goods and/or services identified in the registration for which use of the mark in commerce is claimed, as evidenced by the submitted proof of use, during the relevant period for filing the affidavit of use.

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 this submission, declares that the facts set forth above are true; all statements made of his/her own knowledge are true; and that all statements made on information and belief are believed to be true.

__________________________

Signature of Authorized Person

__________________________

Type or Print Name

__________________________

Date

WARNING:  If your response to this Office action does not meet the requirements of the audit, or includes a request to delete any of the goods identified for the audit, and goods remain in the registration without acceptable proof of use, a second Office action will issue requiring proof of use for all remaining goods for which proof of use is not of record.  See 37 C.F.R. §§2.161(h), 7.37(h).  Therefore, the owner should delete all goods for which proof of use cannot be provided. 

If the owner deletes any audited goods, it may provide proof of use for all remaining goods for which proof of use is not of record to avoid a possible second Office action. 

RESPONSE TIME DEADLINE:  A complete response must be received within 6 months from the issuance date of this Office action or prior to expiration of the 6^th year anniversary date on November 18, 2020, whichever is later.  The owner must respond to all inquiries set forth in this Office action to avoid cancellation of the registration.  If a response is not received, and there is no time remaining in the grace period to file a new affidavit, the registration will be cancelled in its entirety.  37 C.F.R. §2.163(b)-(c); TMEP §§1604.16, 1604.17(a).

DEFICIENCY SURCHARGE INFORMATION:  If the response to this Office action is received by the Office after November 18, 2020, a $100 deficiency surcharge must be submitted.  37 C.F.R. §§2.6, 2.164(a)(1); TMEP §1604.17(a).  (Note:  This only applies when the response time deadline above falls after November 18, 2020.)

ADVISORY:  If a response to this Office action is not filed within the response deadline above, and time remains in the grace period, the owner may avoid cancellation of its registration by filing a new affidavit of use within the grace period.  37 C.F.R. §2.163(c).  Additional fees are required to file a new affidavit during the grace period.  37 C.F.R. §2.161(d)(1)-(2).  For more information about this, please contact the undersigned.

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.

/Timothy Schimpf/

Timothy Schimpf

Trademark Examining Attorney

Law Office 130

(571) 272-9072

timothy.schimpf@uspto.gov

RESPONSE GUIDANCE

• Response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS maintenance or unforeseen circumstances could affect an owner’s ability to timely respond.  

• Responses signed by an unauthorized party are not accepted or processed.  If the owner does not have an attorney, the response must be signed by the individual owner, all joint owners, or someone with legal authority to bind a juristic owner.  If the owner has an attorney, the response must be signed by the attorney.

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.