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: 3/16/2015

 

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

THIS PARTIAL REFUSAL APPLIES TO CLASS(ES) 009 and 038 ONLY.

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 3395605, 4345533, and 4602541.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the enclosed registrations.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a potential consumer would be confused, mistaken, or deceived as to the source of the goods and/or services of the applicant and registrant.  See 15 U.S.C. §1052(d).  A determination of likelihood of confusion under Section 2(d) is made on a case-by case basis and the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) aid in this determination.  Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1349, 98 USPQ2d 1253, 1256 (Fed. Cir. 2011) (citing On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1085, 56 USPQ2d 1471, 1474 (Fed. Cir. 2000)).  Not all the du Pont factors, however, are necessarily relevant or of equal weight, and any one of the factors may control in a given case, depending upon the evidence of record.  Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d at 1355, 98 USPQ2d at 1260; In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont de Nemours & Co., 476 F.2d at 1361-62, 177 USPQ at 567.

 

In this case, the following factors are the most relevant:  similarity of the marks, similarity and nature of the goods and/or services, and similarity of the trade channels of the goods and/or services.  See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.

 

U.S. Registration No. 3395605

 

Comparing the Parties’ Marks

 

Applicant’s mark “SNAP” with ghost design element is highly similar to the cited mark “SNAP” with hand design element.  Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression.  Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F. 3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v).  “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.”  In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)); TMEP §1207.01(b).

 

Although marks must be compared in their entireties, the word portion generally may be the dominant and most significant feature of a mark because consumers will request the goods and/or services using the wording.  See In re Viterra Inc., 671 F.3d 1358, 1362, 1366, 101 USPQ2d 1905, 1908, 1911 (Fed. Cir. 2012); In re Davia, 110 USPQ2d 1810, 1813 (TTAB 2014).  For this reason, greater weight is often given to the word portion of marks when determining whether marks are confusingly similar.  Joel Gott Wines, LLC v. Rehoboth Von Gott, Inc., 107 USPQ2d 1424, 1431 (TTAB 2013) (citing In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999)); TMEP §1207.01(c)(ii).

 

In this instance, the dominant portion of both the applied-for mark and the cited mark is “SNAP”.  The literal elements of both parties’ marks are identical in all respects.

 

Therefore, the marks are confusingly similar.

 

Generally, the greater degree of similarity between the applied-for mark and the registered mark, the lesser the degree of similarity between the goods and/or services of the respective parties that is required to support a finding of likelihood of confusion.  In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202 (TTAB 2009); In re Thor Tech, Inc., 90 USPQ2d 1634, 1636 (TTAB 2009).

 

Comparing the Parties’ Goods/Services

 

Applicant’s telecommunication services for “Telecommunication services, namely, electronic transmission of data, messages, graphics, images and information; providing access to computer, electronic and online databases; broadcasting services over computer or other communication networks, namely, uploading, posting, displaying, tagging and electronically transmitting data, information, messages, graphics and images; telecommunication services, namely, electronic transmission of data, photos, music and videos; broadcasting and streaming of audio-visual media content; transmission of downloadable audio-visual media content” are identical to or at worst, highly related to, registrant’s telecommunications services for “cable television transmission; electronic, electric, and digital transmission of voice, data, images, signals, and messages; providing a high speed access to area networks and a global computer information network; and providing access to telecommunication networks.”  The parties’ services are expressly for electronic transmission of data, messages, and data in other forms such as images or audio.  The parties’ services are both for electronic transmission including via computers, computer networks, and as stated by applicant “or other communication networks” which would include telecommunications services such as broadcasting over cable television networks. 

 

Where the goods and/or services of an applicant and registrant are “similar in kind and/or closely related,” the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as in the case of diverse goods and/or services.  In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); see Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1242, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004); TMEP §1207.01(b).

 

Here, the parties’ services are identical.

 

Therefore, registration as pertaining to International Class 038 is refused.

 

U.S. Registration No. 4345533

 

Comparing the Parties’ Marks

 

Applicant’s mark “SNAP” with ghost design element is highly similar to the cited mark “SNAP” in standard characters.  Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression.  Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F. 3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v).  “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.”  In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)); TMEP §1207.01(b).

 

Although marks must be compared in their entireties, the word portion generally may be the dominant and most significant feature of a mark because consumers will request the goods and/or services using the wording.  See In re Viterra Inc., 671 F.3d 1358, 1362, 1366, 101 USPQ2d 1905, 1908, 1911 (Fed. Cir. 2012); In re Davia, 110 USPQ2d 1810, 1813 (TTAB 2014).  For this reason, greater weight is often given to the word portion of marks when determining whether marks are confusingly similar.  Joel Gott Wines, LLC v. Rehoboth Von Gott, Inc., 107 USPQ2d 1424, 1431 (TTAB 2013) (citing In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999)); TMEP §1207.01(c)(ii).

 

In this instance, the dominant portion of the applied-for mark is “SNAP”.  The literal element of applicant’s mark is identical to the cited mark in all respects. 

 

Applicant’s presentation of the mark in stylized form will not adequately differentiate the parties’ marks, as the cited mark is registered in standard characters.  A mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition.  See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii).  Thus, a mark presented in stylized characters and/or with a design element generally will not avoid likelihood of confusion with a mark in typed or standard characters because the marks could be presented in the same manner of display.  See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”).

 

Therefore, the marks are highly and confusingly similar.

 

Generally, the greater degree of similarity between the applied-for mark and the registered mark, the lesser the degree of similarity between the goods and/or services of the respective parties that is required to support a finding of likelihood of confusion.  In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202 (TTAB 2009); In re Thor Tech, Inc., 90 USPQ2d 1634, 1636 (TTAB 2009).

 

Comparing the Parties’ Goods/Services

 

Applicant’s software goods for “Computer software for the collection, editing, organizing, modifying, transmission, storage and sharing of data and information; computer software for streaming audio-visual media content via a global computer network and to mobile and digital electronic devices” overlap with and are identical to the registrant’s software goods for “Computer application software for smartphones, cell phones, pda devices, and tablet computers, namely, software for accessing, viewing, interacting with and downloading content from electronic magazines and websites.”  It is clear from applicant’s own specimens of use that applicant’s computer software is for use on mobile devices, and that applicant’s software for streaming content is geared towards streaming news and entertainment content.  In other words, both parties provide software for mobile devices that enable consumers to access or collect, download or store, interacting with or modifying, and of course stream or view digital content from a variety of electronic sources, including electronic magazines and websites that have news and entertainment content.

 

Where the goods and/or services of an applicant and registrant are “similar in kind and/or closely related,” the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as in the case of diverse goods and/or services.  In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); see Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1242, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004); TMEP §1207.01(b).  Because the software goods are identical in use, purpose, and function, they are virtually the same goods. 

 

Therefore, registration as pertaining to International Class 009 is refused.

 

U.S. Registration No. 4602541

 

Comparing the Parties’ Marks

 

Applicant’s mark “SNAP” with ghost design element is highly similar to the cited mark “SNAP” with pinwheel design element.  Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression.  Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F. 3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v).  “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.”  In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)); TMEP §1207.01(b).

 

Although marks must be compared in their entireties, the word portion generally may be the dominant and most significant feature of a mark because consumers will request the goods and/or services using the wording.  See In re Viterra Inc., 671 F.3d 1358, 1362, 1366, 101 USPQ2d 1905, 1908, 1911 (Fed. Cir. 2012); In re Davia, 110 USPQ2d 1810, 1813 (TTAB 2014).  For this reason, greater weight is often given to the word portion of marks when determining whether marks are confusingly similar.  Joel Gott Wines, LLC v. Rehoboth Von Gott, Inc., 107 USPQ2d 1424, 1431 (TTAB 2013) (citing In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999)); TMEP §1207.01(c)(ii).

 

In this instance, the dominant portion of both the applied-for mark and the cited mark is “SNAP”.  The literal elements of both parties’ marks are identical in all respects.

 

Therefore, the marks are confusingly similar.

 

Generally, the greater degree of similarity between the applied-for mark and the registered mark, the lesser the degree of similarity between the goods and/or services of the respective parties that is required to support a finding of likelihood of confusion.  In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202 (TTAB 2009); In re Thor Tech, Inc., 90 USPQ2d 1634, 1636 (TTAB 2009).

 

Comparing the Parties’ Goods/Services

 

Applicant’s software goods for “Computer software for the collection, editing, organizing, modifying, transmission, storage and sharing of data and information; computer software for streaming audio-visual media content via a global computer network and to mobile and digital electronic devices” are identical to the registrant’s software goods for “Computer application software for sharing, exchanging, uploading, downloading, backing-up, modifying, viewing, tagging and printing photos, videos, mixed-media content including audio, and other customized digital content, for use with mobile phones and other cellular electronic devices, wireless and wired internet enabled consumer electronic devices, plug-in applets for third party applications and content delivery devices.” 

 

Where the goods and/or services of an applicant and registrant are identical or virtually identical, the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as in the case of diverse goods and/or services.  See United Global Media Grp., Inc. v. Tseng, 112 USPQ2d 1039, 1049 (TTAB 2014) (quoting Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 877, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992)); TMEP §1207.01(b).

 

Therefore, registration as pertaining to International Class 009 is refused.

 

ADDITIONAL ARGUMENTS

 

The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer.  See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993).  Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant.  TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).

 

Because applicant’s mark is highly similar to the cited marks for identical or highly related goods/services for International Classes 009 and 038, registration is refused for those classes based upon a likelihood of confusion.

 

 

Applicant’s Response Options to Above Refusal

 

The stated refusal refers to International Classes 009 and 038 only and does not bar registration in the other classes.

 

Applicant may respond to the stated refusal by submitting evidence and arguments against the refusal.  In addition, applicant may respond by doing one of the following:

 

(1)        Deleting the class to which the refusal pertains;

 

(2)        Filing a request to divide out the goods and/or services that have not been refused registration, so that the mark may proceed toward publication for opposition in the classes to which the refusal does not pertain.  See 37 C.F.R. §2.87.  See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide). If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to all outstanding issues in this Office action, including the refusal.  37 C.F.R. §2.87(e).; or

 

(3)        Amending the basis, if appropriate.  TMEP §806.03(h).  (The basis cannot be changed for applications filed under Trademark Act Section 66(a).  TMEP §1904.01(a).)

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.  However, if applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.

 

 

POTENTIALLY CITABLE MARK(S) (Informational)

 

The filing date of pending U.S. Application Serial No. 86439703 precedes applicant’s filing date.  See attached referenced application.  If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks.  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 mark in the referenced application.  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.

 

 

IDENTIFICATION OF GOODS AND/OR SERVICES

 

THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE GOODS AND/OR SERVICES SPECIFIED THEREIN.

 

The Trademark Act requires that a trademark or service mark application must include a “specification of … the goods [or services]” in connection with which the mark is being used or will be used.  15 U.S.C. §1051(a)(2) (emphasis added), (b)(2) (emphasis added); see 15 U.S.C. §1053.  Specifically, a complete application must include a “list of the particular goods or services on or in connection with which the applicant uses or intends to use the mark.”  37 C.F.R. §2.32(a)(6) (emphasis added).  This requirement for a specification of the particular goods and/or services applies to applications filed under all statutory bases.  See 15 U.S.C. §§1051(a)(2), 1051(b)(2), 1053, 1126(d)-(e), 1141f; 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.01(b)-(c).

 

The USPTO has the discretion to determine the degree of particularity needed to clearly identify goods and/or services covered by a mark.  In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d 1593, 1597 (TTAB 2014) (citing In re Omega SA, 494 F.3d 1362, 1365, 83 USPQ2d 1541, 1543-44 (Fed. Cir. 2007)).  Accordingly, the USPTO requires the description of goods and/or services in a U.S. application to be specific, definite, clear, accurate, and concise.  TMEP §1402.01; see In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d at 1597-98; Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954). 

 

International Class 009

 

The identification of goods for this class is acceptable.

 

International Class 038

 

The following wording is acceptable in this class: “Telecommunication services, namely, electronic transmission of data, messages, graphics, images and information; providing access to computer, electronic and online databases;”

 

The wording “broadcasting services over computer or other communication networks, namely, uploading, posting, displaying, tagging and electronically transmitting data, information, messages, graphics and images;” in the identification of services is indefinite and must be clarified because uploading, posting, displaying, and tagging are not telecommunications services under International Class 038, and the nature of this wording is generally unclear as to the services being provided.  See TMEP §1402.01.  Applicant may substitute the following wording, if accurate:   “broadcasting services over computer or other communication networks, namely, electronically transmitting data, information, messages, graphics and images, where the aforesaid content has been uploaded, posted and tagged by others” in International Class 038.

 

The following wording is acceptable in this class: “telecommunication services, namely, electronic transmission of data, photos, music and videos; broadcasting and streaming of audio-visual media content; transmission of downloadable audio-visual media content”. 

 

International Class 041

 

The following wording is acceptable in this class: “Providing online audio-visual entertainment information via a global computer network in the fields of motion pictures, television programming, videos, music videos and music; providing information via a global computer network in the field of entertainment;”

 

The wording “creation, development, production and distribution of entertainment content” in the identification of services is indefinite and must be clarified because the nature of the services, as well as the specific type of entertainment content, must be clarified.  See TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  “Entertainment services in the nature of development, creation, production and distribution of motion picture films, television shows, and radio programs” in International Class 041.

 

International Class 042

 

The following wording is acceptable in this class: “Hosting of digital content on the internet;”

 

The wording “hosting online facilities for others for managing and sharing online content;” in the identification of services is indefinite and must be clarified because the term “facilities” is generally vague.  See TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  “Hosting on-line web facilities for others for managing and sharing online content” in International Class 042

 

The following wording is acceptable in this class: “application service provider (ASP) services, namely, hosting computer software applications of others; application service provider (ASP) featuring software to enable or facilitate the uploading, downloading, streaming, posting, displaying, linking, sharing or otherwise providing electronic media or information over communication networks”.

 

International Class 045

 

The wording “Social networking services” in the identification of services is indefinite and must be clarified because it must indicate how the services are provided.  See TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  “Online social networking services” in International Class 045.

 

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 at http://tess2.gov.uspto.report/netahtml/tidm.html.  See TMEP §1402.04. 

 

An applicant may only amend an identification to clarify or limit the goods and/or services, but not to add to or broaden the scope of the goods and/or services.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.

 

 

SPECIMEN REQUIRED

 

THIS PARTIAL REQUIREMENT APPLIES TO CLASS(ES) 045 ONLY.

 

Registration is refused because the specimen does not show the applied-for mark in use in commerce in connection with any of the goods and/or services specified in International Class(es) 045 in the application or amendment to allege use.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); In re Chengdu AOBI Info. Tech. Co., 111 USPQ2d 2080, 2081-82 (TTAB 2011); TMEP §§904, 904.07(a), 1301.04(d), (g)(i).  Specifically, the specimen showing the applied-for mark on the opening screen of a mobile application does not associate the mark with the identified services for social networking.  The specimen describing a downloadable mobile application available on iTunes does not show the applied-for mark, but rather the wordmark “SNAPCHAT” and a separate ghost logo; further this particular specimen also fails to show the applied-for mark use in connection with social networking services, as it only describes a mobile application that functions for social networking.  The video specimen shows the applied-for mark on the opening screenshot of a mobile application and online services that are clearly used to access news and video content, but fails to give any indication that applicant provides services for social networking.

 

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 and/or 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 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).  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 goods and/or 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.

 

 

TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE:  Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application.  See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820.  TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $50 per international class of goods and/or services.  37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04.  However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone without incurring this additional fee. 

 

 

 

/Ada P. Han/

U.S. Patent & Trademark Office

Trademark Attorney

Law Office 106

(571) 272-5873

 

 

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 3/16/2015 FOR U.S. APPLICATION SERIAL NO. 86526355

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click 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)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 3/16/2015 (or sooner if specified in the Office action).  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.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.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System (TEAS) response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@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.