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:

 

SUMMARY OF ISSUES:

 

• Prior-Filed Pending Applications
• Sections 1, 2, 3, and 45 Refusal – Failure to Function as a Trademark
• Sections 1 and 45 Refusal – New Specimen Required
• Identification of Goods
• Multiple-Class Application Requirements

 

PRIOR-FILED PENDING APPLICATIONS

 

The effective filing date of pending U.S. Application Serial Nos. 85866729, 86827185, and 86871383 precedes applicant’s filing date. See attached referenced applications. If one or more of the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s). See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq. Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application.

 

In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the marks in the referenced applications. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.

 

SECTIONS 1, 2, 3, AND 45 REFUSAL – FAILURE TO FUNCTION AS A TRADEMARK

 

Registration is refused because the applied-for mark, as used on the specimen of record, does not function as a trademark to indicate the source of applicant’s goods and to identify and distinguish them from others.  Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§1051-1052, 1127; see In re Phoseon Tech., Inc., 103 USPQ2d 1822, 1827-28 (TTAB 2012); In re Remington Prods., Inc., 3 USPQ2d 1714, 1715 (TTAB 1987); TMEP §§904.07(b); 1202 et seq.

 

The applied-for mark, as shown on the specimen, does not function as a trademark because, as used, the mark is only associated with a feature or component of certain goods, which do not appear to be the identified filling product (addressed in further detail, below), as opposed to the source of the overall goods. In addition, where displayed, the wording below the specimen is unclear and cannot be read. It is acceptable, when information cannot be read from an overall picture, for applicant to submit one picture of the mark on the product and then a larger image where the applied-for mark appears so that wording may be read.

 

The specimen, along with any other relevant evidence of record, is reviewed to determine whether an applied-for mark is being used as a trademark.  In re Bose Corp., 546 F.2d 893, 897, 192 USPQ 213, 216 (C.C.P.A. 1976); In re Volvo Cars of N. Am., Inc., 46 USPQ2d 1455, 1459 (TTAB 1998).  Mere intent that a word, design, symbol, or slogan function as a trademark, or the fact that such designation appears on the specimen, is not enough in and of itself to make it a trademark.  See In re Manco, Inc., 24 USPQ2d 1938, 1941 (TTAB 1992) (citing In re Remington Prods. Inc., 3 USPQ2d 1714, 1715 (TTAB 1987)).  The USPTO will not register a designation unless purchasers would be likely to regard it as a source-indicator for the goods.  See In re Manco, Inc., 24 USPQ2d at 1941 (citing In re Remington Prods. Inc., 3 USPQ2d at 1715); TMEP §1202.

 

Use of the symbol “TM” next to the mark on the specimen merely shows applicant’s intent to claim the applied-for mark as a trademark and is not an indicator of whether a mark is actually perceived by the public as a source-indicator.  See In re Remington Prods. Inc., 3 USPQ2d 1714, 1715 (TTAB 1987); In re Anchor Hocking Corp., 223 USPQ 85, 88 (TTAB 1984); In re Indus. Washing Mach. Corp., 201 USPQ 953, 955 (TTAB 1979); TMEP §1202.

 

Applicant may respond to this refusal by submitting a substitute specimen or amending applicant’s basis to intent to use under Section 1(b).

 

Submitting a substitute specimen:  Applicant may submit a substitute specimen that shows the applied-for mark used in commerce as a trademark for the goods in the application, and 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 include tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, and displays associated with the actual goods at their point of sale.  See TMEP §§904.03 et seq.  Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods.  TMEP §904.03(i).

 

To submit a verified substitute specimen online using the Trademark Electronic Application System (TEAS), applicant should (1) answer “yes” to the TEAS response form wizard question to “submit a new or substitute specimen,” and then do the following for each relevant class for which a substitute specimen is being submitted:  (2) attach a jpg or pdf file of the substitute specimen, (3) describe what the specimen consists of, and (4) select the statement that “The substitute specimen(s) was in use in commerce at least as early as the filing date of the application.”

 

Amending to Section 1(b):  If applicant cannot provide an acceptable substitute specimen, applicant may amend the application basis to intent to use under Section 1(b), for which no specimen is required, and the refusal will be withdrawn.  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.  If the same specimen is submitted with an allegation of use, the same refusal will issue.

 

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 a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date.”  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). 

 

To amend to Section 1(b) online using TEAS, applicant should (1) answer “yes” to the TEAS response form wizard question to “change filing basis,” and then do the following for each relevant class for which the filing basis is being amended:  (2) uncheck the box for “Filing Basis Section 1(a),” (3) delete the use dates, and (4) check the box for “Filing Basis Section 1(b).” 

 

Applicant should note the following additional ground for refusal.

 

SECTIONS 1 AND 45 REFUSAL – NEW SPECIMEN REQUIRED

 

In addition, registration is refused because the specimen does not show the applied-for mark in use in commerce in International Class 17.  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).  Specifically, applicant has identified the goods of “fill made of polyurethane foam, namely those with visco-elastic properties, or polyurethane foam and fiber blend, for mattresses and pillows”. Applicant has provided, as a specimen, a photo of a pillow, as opposed to a photo of the filling product for the pillow, sold separately. A component of a finished product, with the finished product as the specimen, does not show the applied-for mark in use for the component, unless the component is sold as an integral component of the finished product.

 

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 goods identified in the application.  15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a). 

 

Applicant may respond to this refusal by satisfying the response options above in the SECTIONS 1, 2, 3, AND 45 REFUSAL – FAILURE TO FUNCTION AS A TRADEMARK sectin.

 

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.

 

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

 

IDENTIFICATION OF GOODS

 

Applicant’s identified goods are “fill made of polyurethane foam, namely those with visco-elastic properties, or polyurethane foam and fiber blend, for mattresses and pillows”. The identification of goods specifies a component of a finished product; however, the record indicates that the mark identifies a finished product itself rather than the component of the finished product.  See TMEP §1402.05(a).  The application must accurately identify the specific goods with which applicant is using or intends to use the mark; thus, applicant must clarify the goods because of this inconsistency in the record.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.05(a). 

 

Accordingly, applicant must amend the identification to clarify whether applicant is identifying a component for use in the manufacture of a finished product or a component that is an integral component of and part of a finished product. If sold as an integral component of a finished product, the international class is determined by the international class of the finished product. TMEP §1402.05(a). Therefore, components as parts of the finished products of mattresses and pillows are in International Class 20.

 

Applicant also must further specify the nature of the component. It is unclear precisely the nature of the fill identified, as applicant identifies that the fill may be a polyurethane foam with visco-elastic properties or a polyurethane foam and fiber blend thereof. An application must specify, in an explicit manner, the particular goods on or in connection with which the applicant uses, or has a bona fide intention to use, the mark in commerce.  See 15 U.S.C. §1051(a)(2), (b)(2); 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Generally, the terminology “and/or” and “or” is not sufficiently explicit language in identifications because it is not clear whether applicant is using the mark, or intends to use the mark, on all the identified goods.  See TMEP §1402.03(a). 

 

For example, “modems and/or monitors” could refer to “modems or monitors” and is unclear which goods applicant intends to identify.  Therefore, applicant should replace “and/or” with “and” in the identification of goods or services, if appropriate, or rewrite the identification with the “and/or” deleted and the goods or services specified using definite and unambiguous language.

 

Finally applicant must clarify the identification of goods to specify the primary composition of the filling and common name of the fiber because that wording is too broad, could identify goods in more than one international class, and does not clearly identify the primary nature of the goods.  See 37 C.F.R. §2.32(a)(6); TMEP §§1401.07, 1402.01, 1402.05(b). While materials for manufacture that are a rubber-based foam generally are classified in International Class 17, the identification of “fibers” is indefinite and must be clarified to further specify the type of fiber identified. For example, while silica fibers are classified in International Class 17, many fibers for textile products, such as polyester stuffing fibers, silk fibers, and textile fibers are classified in International Class 22.

 

In particular, if identifying goods that are not sold as an integral component of the finished product, the primary composition of the goods determines the international class. Thus, the clarification of the fibers as well as the identification of the primary composition of the goods is required.

 

Applicant may substitute any or all of the following identification below, if accurate. Additions to the identification are bolded and underlined, and deleted wording is italicized and struck through. Additional wording that is needed is explained in italics and {in brackets}:

 

If sold as an unfinished product, depending on the composition:

 

“Fill made of polyurethane foam, namely foam those with visco-elastic properties, or polyurethane foam and fiber blend, for use in the manufacture of for mattresses and pillows; fill made primarily of polyurethane foam and a ________________ {identify the composition of the fiber, e.g., “silica”, “textile”, “silk” – please note the primary composition or first-listed item determines the class, and most textile fibers are in Class 22} fiber for use in the manufacture of mattresses and pillows” in International Class 17;

 

“Fill made primarily of _______________ {identify the composition of the fiber, e.g., “silica”, “textile”, “silk” – please note the primary composition or first-listed item determines the class, and most textile fibers are in Class 22} fiber and polyurethane foam for use in the manufacture of mattresses and pillows” in International Class 22;

 

If sold as an integral component of a finished product:

 

“Fill made of polyurethane foam, namely foam with visco-elastic properties, sold as an integral component of mattresses and pillows; fill made primarily of polyurethane foam and a ________________ {identify the composition of the fiber, e.g., “silica”, “textile”, “silk” – please note the primary composition or first-listed item determines the class, and most textile fibers are in Class 22} fiber, sold as an integral component of mattresses ad pillows” in International Class 20

 

If applicant adopts the suggested amendment of the goods, then applicant must amend the classification to International Classes 17, 20, and 22.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§805, 1401.

 

Applicant’s goods may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods or add goods not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods will further limit scope, and once goods are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

The application identifies goods in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on use in commerce under Section 1(a):

 

(1)       List the goods by their international class number in consecutive numerical order, starting with the lowest numbered class.

 

(2)       Submit a filing fee for each international class not covered by the fee already paid (view the USPTO’s current fee schedule at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp).  The application identifies goods that are classified in at least three classes; however, applicant submitted a fee sufficient for only one class.  Applicant must either submit the filing fee for the class not covered by the submitted fee or restrict the application to the one class covered by the fee already paid.

 

(3)       Submit verified dates of first use of the mark anywhere and in commerce for each international class.

 

(4)       Submit a specimen for each international class.  The current specimen is not acceptable for any international class.

 

            Examples of specimens for goods include tags, labels, instruction manuals, containers, and photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale.  Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods. 

 

(5)       Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods listed in the application at least as early as the filing date of the application.” 

 

See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§ 2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).

 

The fees for adding classes to a regular TEAS application are $325 per class when the fee is paid using the Trademark Electronic Application System (TEAS) and $375 per class when the fee is paid in a paper submission.  See 37 C.F.R. §2.6(a)(1)(i)-(ii); TMEP §§810, 1403.02(c).

 

For an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/multiclass.jsp.

 

RESPONSE GUIDELINES

 

To expedite prosecution of the application, applicant is encouraged to file its response to this Office action online via the Trademark Electronic Application System (TEAS), which is available at http://www.gov.uspto.report/trademarks/teas/index.jsp.  If applicant has technical questions about the TEAS response to Office action form, applicant can review the electronic filing tips available online at http://www.gov.uspto.report/trademarks/teas/e_filing_tips.jsp and e-mail technical questions to TEAS@uspto.gov.

 

If applicant has questions regarding this 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. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

/Meridith Debus/

Examining Attorney

Law Office 111

(571) 270-3464

meridith.debus@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.