To: | Steel Supplements Inc. (gxbesq1@gmail.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 87158388 - ONE32 - N/A |
Sent: | 2/24/2018 5:03:34 PM |
Sent As: | ECOM120@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 87158388
MARK: ONE32
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Steel Supplements Inc.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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. A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.
ISSUE/MAILING DATE: 2/24/2018
Introduction
This Office action is in response to applicant’s communication filed on January 24, 2018.
In a previous Office action dated January 23, 2018, the trademark examining attorney refused registration of the applied-for mark based on the following: specimen refusal for the mark differing on the drawing and specimen, and specimen refusal for the specimen not showing the mark with Class 5 goods.
In the response, applicant submitted arguments regarding the specimen refusals and also proposed an amendment to the identification of goods. However, these arguments were found unpersuasive for the reasons described below. Also, the proposed amendment of the identification of goods is beyond the scope of the original identification, and is therefore unacceptable. As such, the proposed amendment has not been entered into the record and the original identification language remains operative; as the original identification language remains operative (and applicant’s arguments were not persuasive), the specimen refusals are continued and maintained.
Further, as the proposed amendment to the identification of goods is unacceptable, this presents a new issue. This new non-final Office action has been issued in order to address the identification issue.
All previous arguments and evidence, where applicable, are incorporated by reference herein.
Summary of Issues:
Specimen Unacceptable – Mark Differs on Drawing and Specimen
Registration is refused because the specimen does not show the applied-for mark in the drawing in use in commerce in International Class 5. 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(g)(i). Specifically, the specimen displays the mark as ONE3²; however, the drawing displays the mark as ONE32.
The drawing shows the mark sought to be registered, and must be a substantially exact representation of the mark as used on or in connection with the goods and/or services, as shown by the specimen. 37 C.F.R. §2.51(a); TMEP §807.12(a). Because the mark in the drawing is not a substantially exact representation of the mark on the specimen, applicant has failed to provide the required evidence of use of the applied-for mark in commerce on or in connection with applicant’s goods. See TMEP §807.12(a).
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 statement of 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).
Regarding whether applicant may submit an amended drawing in response to this refusal, applicant is advised that the drawing of a mark can be amended only if the amendment does not materially alter the mark as originally filed. 37 C.F.R. §2.72(a)(2); see TMEP §§807.12(a), 807.14 et seq. In this case, amending the mark in the drawing to conform to the mark on the specimen would be a material alteration and would not be accepted, because the difference between the mark in the specimen and the drawing is significant and each mark creates a different commercial impression. Specifically, the wording ONE3² evokes the mathematical concept of “squared” in addition to the numbers “one” and “three” (specifically, it creates the different commercial impression of “three squared”). However, the wording in the mark, ONE32, does not contain this concept of a number being “squared” and instead creates a commercial impression based on the numbers one, three, and two. Further, the wording “²” would require an additional search.
Applicant argues “Standard characters drawings can be displayed in any size or font or combinations thereof. The specimen merely shows one such display that is legally within the ‘bounds’ of the applied-for standard character mark. Any commercial impression deriving from the manner in which a standard character drawing may properly be displayed cannot be used as an argument that it does not fall within the acceptable scope of the standard character drawing”. However, while the mark is ONE32 (and therefore the number “2”) is in standard characters, the specimen does not display the number “2”. Instead, the mark displays the wording “ONE3-” combined with a superscript (i.e., “²”). A superscript is a character or symbol in smaller type appearing slightly above and to the side of another character or symbol on the normal line of type, as is seen in the wording ONE3². As discussed above, the superscript “²” is different than merely displaying the number “2” in a different font or size because the superscript “²” means something different, namely it indicates the mathematical concept of “squared”.
Please note that superscripts are not in the USPTO’s standard character set. TMEP §§807.03(a), 807.04(b); see 37 C.F.R. §2.52(a)-(b); In re AFG Indus. Inc., 17 USPQ2d 1162, 1164 (TTAB 1990). TMEP 807.03(a) notes that “Superscripts, subscripts, exponents, or other characters that are not in the USPTO’s standard character set ( see TMEP §807.03(b)) are not permitted in standard character drawings”.
Applicant may respond to this refusal by submitting, for each applicable international class, a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce prior to the expiration of the deadline for filing the statement of use and (b) shows the mark in actual use in commerce for the goods and/or services identified in the statement of use.
Applicant, however, may not withdraw the statement of use. See 37 C.F.R. §2.88(f); TMEP §1109.17.
For more information about this refusal and instructions on how to submit a verified “substitute” specimen online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/J3_1.jsp.
Applicant should note the following additional ground for refusal.
Specimen Unacceptable – Does Not Show Mark With Class 5 Goods
Please note that applicant proposed amending the identification of goods to “An ingredient of dietary and nutritional supplements”; however, as discussed below, this amendment was beyond the scope of the original identification language and is therefore not accepted. The original language “Dietary and nutritional supplements” remains operative, and therefore the specimen does not show the mark in use with dietary and nutritional supplements.
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 statement of 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); see In re Gulf Coast Nutritionals, Inc., 106 USPQ2d 1243, 1247 (TTAB 2013).
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).
Applicant may respond to this refusal by submitting, for each applicable international class, a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce prior to the expiration of the deadline for filing the statement of use and (b) shows the mark in actual use in commerce for the goods identified in the statement of use. A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20: “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior to expiration of the filing deadline for a statement of use.” The substitute specimen cannot be accepted without this statement.
Applicant, however, may not withdraw the statement of use. See 37 C.F.R. §2.88(f); TMEP §1109.17.
For more information about this refusal and instructions on how to submit a verified “substitute” specimen online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/specimen.jsp.
Identification of Goods
The proposed amendment to the identification is not acceptable because it exceeds the scope of the identification in the application, as amended on January 24, 2018. See 37 C.F.R. §§2.32(a)(6), 2.71(a); TMEP §§805, 1402.06 et seq., 1402.07. Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the U.S. application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, the original identification in the application remains operative for purposes of future amendment. See 37 C.F.R. §2.71(a); TMEP §1402.07(d).
In this case, the application, as amended, identifies the goods as follows: “Dietary and nutritional supplements”.
However, the proposed amendment identifies the following goods: “An ingredient of dietary and nutritional supplements”.
This proposed amendment is beyond the scope of the current identification because “An ingredient of dietary and nutritional supplements” could encompass a wide variety of goods that are not dietary and nutritional supplements. For example, “An ingredient of dietary and nutritional supplements” could refer to and encompass a chemical additive that is used in making dietary supplements, but is not itself an actual supplement. Therefore, the wording “An ingredient of dietary and nutritional supplements” may encompass goods outside actual dietary and nutritional supplements.
Please note that applicant may adopt the following identification, if accurate (changes in bold):
International Class 5: Dietary and nutritional supplements sold as a component part of
other nutritional supplements
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.
Response Options
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 $125 per 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 or e-mail without incurring this additional fee.
/Jessica Hilliard/
Jessica Hilliard
Examining Attorney, Law Office 120
Ph: 571-272-4031
Jessica.Hilliard@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.