To: | SHENZHEN JIZHI TITANIUM INDUSTRY CO. LTD (hongyan@cadmon.net) |
Subject: | U.S. TRADEMARK APPLICATION NO. 87681611 - TI - N/A |
Sent: | 4/18/2019 3:31:14 PM |
Sent As: | ECOM104@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 87681611
MARK: TI
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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: SHENZHEN JIZHI TITANIUM INDUSTRY CO. LTD
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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: 4/18/2019
THIS IS A FINAL ACTION.
On April 13, 2018, action on this application was suspended pending the disposition of U.S. Application Serial No. 87674501. The referenced pending application has abandoned and is no longer a potential bar to the registration of applicant’s mark.
This Office action is in response to applicant’s communication filed on March 5, 2018.
In a previous Office action dated March 1, 2018, the trademark examining attorney refused registration of the applied-for mark under Sections 1 and 45 of the Trademark Act for failing to show the applied-for mark in actual use in commerce and under Section 2(e)(1) for the mark being merely descriptive of the applied-for goods. In addition, applicant was required to satisfy requirements to provide an accurate mark description under 37 C.F.R. §2.37 and respond to a request for information under 37 C.F.R. §2.61(b).
SUMMARY OF ISSUES MADE FINAL that applicant must address:
SECTION 2(e)(1) REFUSAL – MARK IS MERELY DESCRIPTIVE OF APPLIED-FOR GOODS
Applicant’s mark is TI in stylized form for “Beer glasses; Beer jugs; Beer mugs; Bottle gourds; Bottle openers; Bottle squeegees; Bottle stands; Coffee mugs; Coffee servers; Cooking forks; Cooking funnels; Cooking graters; Cooking pots; Cooking skewers; Cooking spoons; Cooking strainers; Cups; Drinking flasks; Drinking flasks; Drinking glasses; Drinking glasses, namely, tumblers; Drinking horns; Drinking steins; Drinking straw dispensers; Drinking straw holders; Drinking straws; Drinking straws of glass; Drinking troughs; Drinking troughs for animals; Drinking troughs for livestock; Drinking vessels; Heat-insulated containers for beverages; Heat-insulated containers for household use; Heat-insulated vessels; Jugs; Mugs; Stew-pans; Vacuum bottles; Drinking bottles for sports; Empty spray bottles; Perfume bottles sold empty; Sake serving bottles (tokkuri); Straws for drinking; Vacuum bottles; Wooden cooking spoons" in Class 21.
The attached evidence from rsc.org indicates the letters “TI” are the abbreviation for the word “titanium.” According to explainthatstuff.com, “titanium” is a silvery-white metal that resists corrosion and forms strong alloys. The evidence from monroeengineering.com also indicates it has uses in a wide range of applications due to its durability.
“Whether consumers could guess what the product [or service] is from consideration of the mark alone is not the test.” In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).
Applicant’s applied-for goods comprise various drinking, cooking, and beverage containers. The letters “TI” are descriptive of the goods because the wording, “TI” is an abbreviation for the word “titanium,” which is a common ingredient in the goods. The following third-party websites display the wording “TI” used to describe the titanium composition of beverage and drinking goods. Consumers are therefore commonly exposed to the letters “TI” and would perceive the letters as merely describing an ingredient of applicant’s goods or their composition.
http://www.zapals.com/keith-700ml-titanium-water-bottle-with-ti-lid.html
http://www.vargooutdoors.com/titanium-water-bottle-with-ti-lid.html
http://snowpeak.com/collections/titanium/products/ti-double-h200-stacking-mug-tw-124
http://www.hkequipment.net/product-p/tstraw4.htm
http://www.fireboxstove.com/index.php?route=product/product&product_id=345
In addition to the above third-party website evidence, the mark “TI” describes the composition of applicant’s goods because applicant advertises the goods are made from titanium. See the following website evidence, showing the applied-for mark used on a bottle in close association with a description of the goods indicating they are made from titanium:
http://www.amazon.com/Ti-Living-Titanium-Outdoor-Ultralight/dp/B07K47TDQS
Thus, the mark “TI” immediately describes an ingredient or the composition of applicant’s goods. For these reasons, the refusal to register applicant’s mark on the Principal Register under Section 2(e)(1) of the Trademark Act is maintained and made FINAL.
SECTIONS 1 AND 45 REFUSAL – DIGITALLY ALTERED SPECIMENS
Applicant was previously refused registration in International Class 21 because the specimens provided appeared to have been digitally altered to display applicant’s mark. 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 specimens 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 21 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).
An image of a product or packaging that has been digitally created or otherwise altered to include the mark 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 addition, a photo of the mark on a label, tag, or piece of paper that appears on applicant’s or a third party’s goods or packaging is generally not acceptable to show applicant’s use of the applied-for mark in commerce. See 15 U.S.C. §1127; TMEP §§904.03(a), 904.07(a). Applicant must show the mark on applicant’s own goods or packaging as it is seen by the purchasing public, with goods that have actually been sold or transported in commerce. See TMEP §904.07(a).
In this case, applicant’s specimens and substitute specimens show the applied-for mark “TI” used on various beverage containers. The mark is shown in white on silver bottles. The texture of the mark is grainy and displays no reflection in the specimens. Close inspection of the mark results in pixilation and blurring, such that the mark has the appearance of having been digitally superimposed on top of the goods. On the whole, the mark appears to have been digitally added to the goods and therefore does not show use of the mark in commerce.
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). “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 placed in any manner on the goods, packaging, tags or labels, or displays of the goods, and (3) the goods are actually sold or transported in commerce. See 15 U.S.C. §1127.
In addition to the examples of specimens in (2) in the above paragraph, examples of specimens for goods also include instruction manuals, containers, and webpages that include a picture or textual description of the goods associated with the mark and the means to order the goods. See TMEP §§904.03 et seq.
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. 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, see the Specimen webpage.
Since the mark appears to have been digitally added to the goods, the specimens fail to show the mark in actual use in commerce, and the refusal to register under Sections 1 and 45 of the Trademark Act is maintained and made FINAL.
REQUEST FOR INFORMATION
In the non-final Office action issued March 1, 2018, applicant was required to respond to a request for information pertaining to the material composition of the applied-for goods as well as inquiries concerning the creation of the submitted specimens. Applicant has not provided sufficient and complete responses to the requests, therefore the request for information issued under 37 C.F.R. §2.61(b) are maintained and made FINAL.
(1) Fact sheets, instruction manuals, brochures, advertisements and pertinent screenshots of applicant’s website as it relates to the goods and/or services in the application, including any materials using the terms in the applied-for mark. Merely stating that information about the goods and/or services is available on applicant’s website is insufficient to make the information of record.;
(2) If these materials are unavailable, applicant should submit similar documentation for goods and services of the same type, explaining how its own product or services will differ. If the goods and/or services feature new technology and information regarding competing goods and/or services is not available, applicant must provide a detailed factual description of the goods and/or services. Factual information about the goods must make clear how they operate, salient features, and prospective customers and channels of trade. For services, the factual information must make clear what the services are and how they are rendered, salient features, and prospective customers and channels of trade. Conclusory statements will not satisfy this requirement.; and
(3) Applicant must respond to the following questions: Are applicant’s goods composed of titanium either in full or in-part?
See 37 C.F.R. §2.61(b); TMEP §§814, 1402.01(e).
A specimen must show the mark as used in commerce, which means use in the ordinary course of trade (not merely to reserve a right in the mark). 15 U.S.C. §§1051, 1052, 1127. A specimen shows a mark used in commerce for goods only if it shows the mark placed on the goods, packaging, tags or labels affixed to the goods, or displays of the goods, and the goods are actually sold or transported for sale in commerce. 15 U.S.C. §1127. Because the specimen of record appears to be digitally created or altered, or is otherwise a mock-up, it does not appear to show the mark as actually used in commerce. Therefore, to permit proper examination of the application, applicant must submit additional information for the record about the specimen and how the mark as shown in the specimen is in use in commerce with applicant’s goods. See 37 C.F.R. §2.61(b); TMEP §814.
Accordingly, applicant must respond to the following questions and requests for documentation to satisfy this request for information:
(1) How are applicant’s goods sold? Specify the retail, wholesale, or other sales environment in which the goods are sold.
(2) Please provide copies of invoices, bills of sale, or other documentation of sales of the goods.
(3) Was the specimen created for submission with this application?
(4) Does the specimen show applicant’s product as it is currently being sold to consumers?
(5) How do applicant’s goods appear in the actual sales environment? If sold in stores, provide photos showing the goods for sale in the stores. If sold online, identify the websites and provide copies of the webpages showing the goods for sale. And if sold in another type of sales environment, provide photos and/or documentation showing the goods for sale in that environment.
(6) If the information in question (5) about how the goods appear in the actual sales environment is not available to applicant, then please describe how applicant’s goods are transported for sale and provide photos and other documentation showing how applicant’s mark appears on the goods and/or its packaging when the goods are being transported for sale.
See 37 C.F.R. §2.61(b); TMEP §814.
Failure to comply with a request for information is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814. Merely stating that information is available on applicant’s website is an insufficient response and will not make the relevant information of record. See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).
MARK DESCRIPTION REQUIRES AMENDMENT
The following description is suggested, if accurate: The mark consists of a shaded square inside of which appear the stylized letters “TI”.
Because applicant has not provided an accurate description of the mark, the requirement issued under 37 C.F.R. §2.37 is maintained and made FINAL.
RESPONSE OPTIONS
(1) a response filed using the Trademark Electronic Application System (TEAS) that fully satisfies all outstanding requirements and/or resolves all outstanding refusals; and/or
(2) an appeal to the Trademark Trial and Appeal Board filed using the Electronic System for Trademark Trials and Appeals (ESTTA) with the required filing fee of $200 per class.
37 C.F.R. §2.63(b)(1)-(2); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.
In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues. TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters). There is a fee required for filing a petition. 37 C.F.R. §2.6(a)(15).
ASSISTANCE
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.
Daniel Donegan
/Daniel Donegan/
Trademark Examining Attorney
Law Office 104
571-270-0455
daniel.donegan@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.