Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

FINAL OFFICE ACTION

 

The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned.  Respond using the Trademark Electronic Application System (TEAS) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

 

Issue date:  December 11, 2019

 

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on November 14, 2019.

 

In a previous Office action(s) dated June 28, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following:  failure to show the applied-for mark in use in commerce with any of the specified services.  In addition, applicant was required to satisfy the following requirement(s):  provide information about the specimen.

 

In its response, applicant provided information about its specimen and submitted a substitute specimen.

 

However, the trademark examining attorney maintains and now makes FINAL the refusal(s) and/or requirement(s) in the summary of issues below.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

SUMMARY OF ISSUES MADE FINAL that applicant must address:

• Specimen Required
• Information about Specimen Required

 

 

SPECIMEN REQUIRED

 

Applicant was previously refused registration in International Class(es) 41 because the submitted specimens do not show the mark in the drawing page in use in commerce.  Specifically, none of the specimens showed the requisite direct association between the mark UMMAA BROADCASTING and the applied-for services, Continuing public service programs in the field of political and social issues relevant to Muslims produced and distributed over television, satellite, film, audio, video, internet, and 3-D virtual reality media.  Applicant was previously refused registration in International Class(es) 41 because (1) the application did not include a specimen; (2) the substitute specimen consisting of a business card did not show applicant’s mark in use in commerce for the applied-for services because there is no association between the mark and the “continuing public services programs” identified in the application; (3) the second substitute specimen did not show an association between the mark because it made no reference to the applied-for 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 substitute specimen for each refused international class that does not show proper use of the applied-for mark in commerce for the reasons immediately stated below.  Thus, the refusal to register the applied-for mark in International Class(es) 41 is now made final because applicant failed to provide evidence of use of the mark in commerce.  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). 

 

Registration is refused because the substitute specimen, filed November 14, 2019 in International Class(es) 41 appears to consist of a digitally altered image or mock-up of the mark on a webpage and does not show the applied-for mark in actual use in commerce.  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). 

 

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); 1301.01 et seq.  “Use in commerce” means (1) a bona fide use of the applied-for mark in the ordinary course of trade (and not merely to reserve a right in the mark), (2) the mark is used in the sale, advertising, or rendering of the services, and (3) the services are actually rendered in commerce.  See 15 U.S.C. §1127. 

 

A website showing the mark for the services that is not currently engaged in selling, advertising, or rendering the services does not show actual use of the mark in commerce.  See 15 U.S.C. §1127; TMEP §§904.04(a), 904.07(a); cf. In re Chica, Inc., 84 USPQ2d 1845, 1848 (TTAB 2007) (holding that “a mere drawing of the goods with an illustration of how the mark may be displayed” was not an acceptable specimen because it did not show actual use in commerce); In re The Signal Cos., 228 USPQ 956, 957-58 n.4 (TTAB 1986) (noting that a printer’s proof of an advertisement would not be an acceptable specimen because it does not show actual use in commerce).

 

In this case, the specimen appears to have been created for submission as a specimen because it is an “About Us” page that differs considerably from the “About Us” page submitted as a specimen on May 23, 2019.  Specifically, the November 14, 2019 filed specimen contains photos of applicant and a Twitter® feed that were not on the May 23, 2019 specimen, nor on the original website specimen, filed November 27, 2018.  In light of these differences, it does not appear that the most recently filed substitute specimen shows the mark as it was used prior to the filing date, which is a requirement for substitute specimens.  37 C.F.R. §2.59(a). As such, it appears to be a mockup or created for purposes of submission as a specimen, and does not show actual use of the mark in commerce.

 

Further, the second page of the specimen showing a screen capture of a video does not show UMMAA BROADCASTING in use in commerce with the applied-for services.  As shown by the attached evidence (http://www.facebook.com/NowThisPolitics/videos/418006818839653/), the video displayed on the specimen is a video created and published by NOW THIS, a media company with no apparent relationship with applicant. As such, the use of a third-party’s video on applicant’s website does not show the UMMAA BROADCASTING mark in use in commerce with a continuing program. Further, even if this were a video created by applicant, a single video does not create the required direct association between the mark and the applied-for services.  Therefore, the submitted specimen cannot be accepted.

 

Additional information/documentation required.  Applicant was required to provide additional information regarding the specimens to enable proper examination of the application.  However, applicant did not submit the requested information in applicant’s response.  “The Trademark Rules of Practice have the effect of law and failure to comply with a request for information is grounds for refusal of registration.”  In re Page, 51 USPQ2d 1660, 1665 (TTAB 1999) (citing In re Babies Beat Inc., 13 USPQ2d 1729, 1731 (TTAB 1990)).  Thus, the requirement for additional information is maintained and made final.  37 C.F.R. §§2.61(b), 2.63(b).

 

Under 37 C.F.R. §2.61(b), an examining attorney “may require the applicant to furnish such information and exhibits as may be reasonably necessary to the proper examination of the application.”  Under this rule, an examining attorney may request literature, exhibits, and general information concerning applicant’s goods and/or services, circumstances surrounding applicant’s applied-for mark, and, if applicable, the use or intended use of applicant’s applied-for mark.  See TMEP §814.

 

To permit proper examination of the application record for compliance with use in commerce requirements, applicant must respond to the following requests for information and documentation.  See 37 C.F.R. §2.61(b); TMEP §814.  Answer for each specimen/photograph/image provided.  Applicant did not respond to the following requests for information.

 

(1)   For each webpage submission, either as a specimen or as supporting evidence, provide a digital copy of the entire webpage from top to bottom, as rendered in an Internet browser, that includes the URL and access or print date, to permit proper and complete examination of this application and an accurate record of the entirety of the webpage submission. Applicant did not provide the URL access and print date for each of the specimens submitted.

 

(2)   Was the specimen created for submission with this application?  If so, specify the date each specimen was created.   Applicant did not provide information regarding the date the specimen was created.

 

Response options.  Applicant may respond to the refusal of registration due to the specimen’s failure to show actual use in commerce by amending the filing basis to allege intent to use the mark in commerce, for which no specimen is required now.  See 37 C.F.R. §2.34.  This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.  In addition, the amendment to Section 1(b) will result in the reinstitution of the Section 2(e)(1) refusal as merely descriptive.

 

Alternatively, applicant may also respond to the refusal by submitting 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.  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 at least as early as the filing date of the application or prior to the filing of the amendment to allege use.”  The substitute specimen cannot be accepted without this statement. 

 

For an overview of these response options and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, see the Specimen webpage.

 

If applicant submits a verified substitute specimen, applicant must also fully respond to all the requirements for information and documentation.  Failure to comply with a requirement to furnish information is grounds for refusing registration.  In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.  Merely stating that evidence is available on applicant’s or a third party website or providing a hyperlink of such a website is an insufficient response and will not make the additional information or materials of record.  See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).  However, amending the application’s filing basis to intent-to-use under Section 1(b) will also moot the requirements for information and documentation.

 

 

 

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.  

 

How to respond.  Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).

 

 

SO

/Erica Jeung Dickey/

Trademark Examining Attorney

Law Office 112

(571) 270-3517

erica.dickey@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant 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.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on December 11, 2019 for

U.S. Trademark Application Serial No. 87584053

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

SO

/Erica Jeung Dickey/

Trademark Examining Attorney

Law Office 112

(571) 270-3517

erica.dickey@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from December 11, 2019, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”