Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

U.S. Registration No. 4984325   Mark:  LEAF LIFE
Correspondence Address:         Jason H. Rosenblum        LAW OFFICE OF JASON H. ROSENBLUM, PLLC        210B Rutledge Avenue, 2nd Floor        Charleston SC 29403
Owner:  Sol NY Corp.
Reference/Docket No. 135-004               Correspondence Email Address:         jhr@jhrlegal.com;office@jhrlegal.com

 

 

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 6, 2023

 

The Sections 8 & 15 Combined Affidavit submitted on June 21, 2021, cannot be accepted or acknowledged for the reasons set forth below.

 

ISSUES PERTAINING TO SECTION 8 PORTION ONLY

 

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, or on business signage or a webpage. A Section 8 Affidavit must include a specimen showing current actual use of the mark for each class of goods and/or services.  15 U.S.C. §1058(b); §37 C.F.R. 2.161(a)(7). 

 

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).  Similarly, an image of business signage, such as on a storefront or delivery van, or a webpage that has been digitally created or altered to include the mark, or a mockup of how the mark may be displayed, is not a proper specimen for services 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 §1301.04(a).

 

In this case, the specimen appears to be digitally altered.  The mark appears to float over the water pipe.

 

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(a)(7); 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).

 

Sample Declaration

The following statement and declaration under 37 C.F.R. §2.20 can be used to verify the Section 8 Affidavit, 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 specimen, during the relevant period for filing the 6-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.

 

__________________________

Signature of Authorized Person

__________________________

Type or Print Name

__________________________

Date

 

RESPONSE TIME DEADLINE:  A complete response must be received within 6 months from the issuance date of this Office action.  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, the registration will be cancelled in its entirety.  37 C.F.R. §2.163(b)-(c); TMEP §§1604.16, 1604.17(b).

 

DEFICIENCY SURCHARGE REQUIRED:  The owner must submit a $100 deficiency surcharge with its response to this Office action.    37 C.F.R. §§2.6, 2.164(a)(2); TMEP §1604.17(b).

 

 

 

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.

 

                                                                                                   /tkh/

Tiffany Huntley

Lead Trademark Specialist

Post Registration

Phone 571.272.9557

Tiffany.Huntley@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.