Reconsideration Letter

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

REQUEST FOR RECONSIDERATION DENIED

 

ISSUE/MAILING DATE: 1/8/2019

 

The trademark examining attorney has carefully reviewed applicant’s request for reconsideration and is denying the request for the reasons stated below.  See 37 C.F.R. §2.63(b)(3); TMEP §§715.03(a)(ii)(B), 715.04(a).  The following refusal made final in the Office action dated September 4, 2018 are maintained and continue to be final:  specimen refusal.  See TMEP §§715.03(a)(ii)(B), 715.04(a).  The following refusal made final in the Office action is withdrawn: Section 2(d) Refusal.  See TMEP §§715.03(a)(ii)(B), 715.04(a).

 

In the present case, applicant’s request has not resolved all the outstanding issue(s), nor does it raise a new issue or provide any new or compelling evidence with regard to the outstanding issue(s) in the final Office action.  In addition, applicant’s analysis and arguments are not persuasive nor do they shed new light on the issues.  Accordingly, the request is denied.

 

In the final Office action issued on September 4, 2018, registration was refused because the specimen of record appears to be mere advertising material, and thus, fails to show the applied-for mark in use in commerce. The substitute specimen provided in the request for reconsideration filed on December 11, 2018, is not acceptable. Therefore, registration is refused because the webpage specimen in International Class 9 is not an acceptable display associated with the goods and appears to be mere advertising material.  See TMEP §904.07(a).  The specimen, thus, fails to show the applied-for mark in use in commerce.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §2.56(a). 

 

To be acceptable, a specimen of a webpage display must include (1) a picture or sufficient textual description of applicant’s goods that (2) shows the mark associated with the goods, and (3) a way of ordering the goods (e.g., a “shop online” or “shopping cart” button or link, an order form, or a telephone number for placing orders).  TMEP §904.03(i); see In re Sones, 590 F.3d 1282, 1286-89, 93 USPQ2d 1118, 1122-24 (Fed. Cir. 2009); In re Azteca Sys., Inc., 102 USPQ2d 1955, 1957-58 (TTAB 2012).  If applicant’s specimen includes a telephone number, internet address, and/or mailing address that appears only with corporate contact information, the specimen may not show sufficient means for ordering the goods.  See In re Genitope Corp., 78 USPQ2d 1819, 1822 (TTAB 2006); TMEP §904.03(i)(C)(2).  In that circumstance, the specimen may also need to include instructions on how to place an order or an offer to accept orders.  See In re Quantum Foods, Inc., 94 USPQ2d 1375, 1379 (TTAB 2010); TMEP §904.03(i)(C)(2).

 

In this case, the specimen does not include a way of ordering the goods in that there is no button or link, order form, or telephone number for placing orders for the identified goods.  See In re Sones, 590 F.3d at 1286-89, 93 USPQ2d at 1122-24; In re Azteca Sys., Inc., 102 USPQ2d at 1957; TMEP §§904.03(i) et seq.  Without this feature, the specimen is mere advertising material, which is generally not acceptable as a specimen for showing use in commerce for goods.  See In re Kohr Bros., 121 USPQ2d 1793, 1794 (TTAB 2017) (quoting In re Quantum Foods, Inc., 94 USPQ2d at 1379); In re Genitope Corp., 78 USPQ2d at 1822; TMEP §904.04(b). 

 

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 or amendment to allege use.  15 U.S.C. §1051(a)(1); 37 C.F.R. §2.56(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.  As stated above, webpage displays 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 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 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.

 

(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 the Specimen webpage. 

 

If applicant has already filed a timely notice of appeal with the Trademark Trial and Appeal Board, the Board will be notified to resume the appeal.  See TMEP §715.04(a).

 

If no appeal has been filed and time remains in the six-month response period to the final Office action, applicant has the remainder of the response period to (1) comply with and/or overcome any outstanding final refusal, and/or (2) file a notice of appeal to the Board.  TMEP §715.03(a)(ii)(B); see 37 C.F.R. §2.63(b)(1)-(3).  The filing of a request for reconsideration does not stay or extend the time for filing an appeal.  37 C.F.R. §2.63(b)(3); see TMEP §§715.03, 715.03(a)(ii)(B), (c). 

 

 

/Andrew Crowder-Schaefer/

Trademark Examining Attorney

Law Office 104

(571) 272-0087

andrew.crowderschaefer@uspto.gov

 

 

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 1/8/2019 FOR U.S. APPLICATION SERIAL NO. 87654425

 

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 1/8/2019 (or sooner if specified in the Office action).  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.  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 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.