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: 4/22/2015

 

 

THIS IS A FINAL ACTION.

 

This final Office action is in response to applicant’s communication filed on April 4, 2015.

 

The Response to Office Action included a signed declaration and response signature.  It did not include a substantive response to any of the issues in the March 3, 2015 Office Action.  As discussed in the March 16, 2015 Notice of Incomplete Response, none of the content from the March 12, 2015 Response to Office Action was accepted because that response was not properly signed.  All previous evidence and arguments are incorporated herein by reference.

 

Applicant was previously refused registration in International Class 45 because the specimen did not show a direct association between the applied-for mark and the identified services.  Response options for overcoming that refusal, if any, were set forth in the prior Office action.  Applicant, however, responded to such refusal by submitting a signed declaration and response signature, but not a substitute specimen.  Thus, the refusal to register the applied-for mark because applicant has failed to provide evidence of use of the mark in commerce in International Class 45 is now made final.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a), 2.63(b); TMEP §§904, 904.07, 1301.04(g)(i). 

 

In addition, the following requirements are now made FINAL: 

 

• Requirement to Amend the Description of the Mark
• Requirement for Application Basis - Class 9

 

See 37 C.F.R. §2.63(b).

 

 

SPECIMEN REQUIRED – CLASS 45

 

Registration is refused because the specimen in International Class 45 does not show a direct association between the applied-for mark and the identified services; thus the specimen fails to show the applied-for mark in use in commerce for each international class.  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), 1301.04(f)(ii), (g)(i). 

 

Specimens consisting of advertising or promotional materials generally must show a direct association between the mark and the services for which registration is sought.  See In re Universal Oil Prods. Co., 476 F.2d 653, 655, 177 USPQ 456, 457 (C.C.P.A. 1973); In re HSB Solomon Assocs., 102 USPQ2d 1269, 1274 (TTAB 2012); TMEP §1301.04(f)(ii).  While the exact nature of the services does not need to be specified in the specimen, there must be something which creates in the mind of the purchaser an association between the mark and the service.  In re Adair, 45 USPQ2d 1211, 1215 (TTAB 1997) (quoting In re Johnson Controls Inc., 33 USPQ2d 1318, 1320 (TTAB 1994)); see In re Osmotica Holdings, Corp., 95 USPQ2d 1666, 1668 (TTAB 2010).

 

In the present case, the specimen appears to be a screenshot of the applicant’s website.  The specimen shows the mark in a banner above informational wording.  However, neither this wording, nor any of the other wording or images on the page illustrates the applicant’s services.  Therefore, the specimen does not show the mark being used in connection with the applicant’s services, and as a result a substitute specimen is required.

 

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 services identified in the application or amendment to allege use.  15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).

 

Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and webpages that show the mark used in the actual sale, rendering, or advertising of the services.  See TMEP §1301.04(a), (h)(iv)(C).

 

Applicant may respond to this refusal by satisfying one of the following for each applicable international class:

 

(1)  Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the services identified in the application or amendment to allege use.

 

(2)  Amend the filing basis to intent to use under Section 1(b), for which no specimen is required.  This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.

 

For an overview of both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/specimen.jsp.

 

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.

 

If applicant responds to the refusal, applicant must also respond to the requirements set forth below.

 

 

AMENDMENT TO DESCRIPTION OF MARK REQUIRED

 

The description of the mark is accurate but incomplete because it does not describe all the significant aspects of the applied-for mark.  Applications for marks not in standard characters must include an accurate and concise description of the entire mark that identifies literal elements as well as any design elements.  See 37 C.F.R. §2.37; TMEP §§808 et seq. 

 

Therefore, applicant must provide a more complete description of the applied-for mark.  The following is suggested:

 

The mark consists of the blue letters “VIM” on a black background.  There is an orange dot inside the opening of the letter “V”.

 

 

BASIS FOR APPLICATION – CLASS 9

 

Applicant has not specified a filing basis for Class 9 in the application.  An application must specify and meet the requirements of at least one filing basis.  37 C.F.R. §2.32(a)(5); TMEP §806.

 

An application may be filed based on any of the following:

 

(1)       Use of the mark in commerce under Trademark Act Section 1(a);

 

(2)       A bona fide intention to use the mark in commerce under Section 1(b);

 

(3)       A claim of priority under Section 44(d) that is based on an earlier-filed foreign application, and that has been filed within six months of the filing date of the foreign application; and/or

 

(4)       A foreign registration of a mark in applicant’s country of origin under Section 44(e).

 

15 U.S.C. §§1051(a)-(b), 1126(d)-(e); 37 C.F.R. §2.34(a)(1)-(a)(4); TMEP §806.01(a)-(d).

 

Therefore, applicant must (1) amend the application to specify at least one filing basis, and (2) satisfy all the requirements for the basis or bases asserted.  TMEP §806.

 

Depending on the circumstances, applicant may be entitled to assert more than one of the above bases.  When claiming more than one basis, applicant must (1) satisfy all requirements for each basis claimed; (2) state that more than one basis is being asserted; and (3) list separately each basis, followed by the goods or services to which that basis applies.  37 C.F.R. §2.34(b)(2); TMEP §806.02(a).

 

Although multi-basis applications are permitted, applicant cannot assert both use in commerce and intent to use for the same goods or services.  37 C.F.R. §2.34(b)(1); TMEP §806.02(b).

 

Section 1(a) Requirements

 

An application based on use of the mark in commerce must include the following:

 

(1)       The following statement:  “The mark is in use in commerce, as defined by 15 U.S.C. §1127, and was in use in such commerce on or in connection with the goods or services listed in the application as of the application filing date;”

 

(2)       The date of first use of the mark anywhere on the goods or in connection with the services;

 

(3)       The date of first use of the mark in commerce as a trademark or service mark;

 

(4)       One “specimen” that shows the mark used on the goods, or in connection with the services, for each class of goods and services (i.e., shows how applicant actually uses the mark in commerce).  If a specimen was not submitted with the initial application, applicant must submit the following statement:  “The specimen was in use in commerce at least as early as the application filing date;” and

 

(5)       Verification, in an affidavit or signed declaration under 37 C.F.R. §2.20, of the above statements and dates of use.

 

See 15 U.S.C. §1051(a); 37 C.F.R. §§2.34(a)(1), 2.59(a), 2.193(e)(1); TMEP §806.01(a).

 

Section 1(b) Requirements

 

An application based on a bona fide intention to use the mark in commerce must include 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 or services listed in the application as of the filing date of the application.

 

15 U.S.C. §1051(b)(3)(B); 37 C.F.R. §2.34(a)(2); TMEP §806.01(b); see 37 C.F.R. §2.193(e)(1).

 

If applicant amends the application to assert Trademark Act Section 1(b) as a basis, applicant must file an allegation of use prior to registration.  15 U.S.C. §1051(b)-(d); 37 C.F.R. §2.35(b)(8); TMEP §§806.01(b), 1103.  An allegation of use must include dates of first use, a specimen showing actual use of the mark in commerce for each international class, and a fee, among other requirements.  37 C.F.R. §§2.6, 2.76, 2.88; TMEP §§806.01(b), 1103.  In addition, certain time restrictions apply to filing allegations of use.  See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76(a), 2.88(a); TMEP §§1104.03, 1104.03(b), 1109.04. 

 

Allegations of use can be filed electronically using the Trademark Electronic Application System (TEAS) at http://www.gov.uspto.report/trademarks/teas/intent_to_use.jsp.

 

 

TRADEMARK COUNSEL SUGGESTED

 

Because of the legal technicalities and strict deadlines involved in the USPTO application process, applicant may wish to hire a private attorney specializing in trademark matters to represent applicant in this process and provide legal advice.  Although the undersigned trademark examining attorney is permitted to help an applicant understand the contents of an Office action as well as the application process in general, no USPTO attorney or staff is permitted to give an applicant legal advice or statements about an applicant’s legal rights.  TMEP §§705.02, 709.06. 

 

For attorney referral information, applicant may consult the American Bar Association’s Consumers’ Guide to Legal Help at http://www.abanet.org/legalservices/findlegalhelp/home.cfm, an attorney referral service of a state or local bar association, or a local telephone directory.  The USPTO may not assist an applicant in the selection of a private attorney.  37 C.F.R. §2.11.

 

 

RESPONSE TO FINAL OFFICE ACTION

 

Applicant must respond within six months of the date of issuance of this final Office action or the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond by providing one or both of the following:

 

(1)       A response that fully satisfies all outstanding requirements and/or resolves all outstanding refusals.

 

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

 

37 C.F.R. §2.63(b)(1)-(2); 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.  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 final 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 §§709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this final Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

/Alyssa Steel/

Alyssa Paladino Steel

Trademark Examining Attorney

Law Office 107

(571) 272-8808

alyssa.steel@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 4/22/2015 FOR U.S. APPLICATION SERIAL NO. 86452745

 

Your trademark application has been reviewed.  The trademark examining attorney assigned by the USPTO to your application has written an official letter to which you must respond.  Please follow these steps:

 

(1)  Read the LETTER by clicking on this link or going to http://tsdr.gov.uspto.report/, entering your U.S. application serial number, and clicking 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)  Respond within 6 months (or sooner if specified in the Office action), calculated from 4/22/2015, using the Trademark Electronic Application System (TEAS) response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.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. 

 

(3)  Questions about the contents of the Office action itself should be directed to the trademark examining attorney who reviewed your application, identified below. 

 

/Alyssa Steel/

Alyssa Paladino Steel

Trademark Examining Attorney

Law Office 107

(571) 272-8808

alyssa.steel@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.