To: | THE BRAFMAN GROUP INC (trademarks@legalforce.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 87741209 - DURAMONT - 1062067 |
Sent: | 4/13/2018 8:46:43 AM |
Sent As: | ECOM121@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 87741209
MARK: DURAMONT
|
|
CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
|
APPLICANT: THE BRAFMAN GROUP INC
|
|
CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
|
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: 4/13/2018
SEARCH OF OFFICE’S DATABASE OF MARKS
The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
SPECIMEN REFUSAL – MOCK-UP SPECIMEN
A mock-up of a product or its 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 photograph of the mark on a label, tag, or piece of paper placed on top of 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, the specimen appears to consist of a plastic storage container with a roughly cut out piece of paper displaying the mark taped thereon. This does not show a typical display of a label on such goods—such a label generally contains more product information such as the dimensions of the goods, the uses of the goods, and the materials used to create the goods, among other things. Without this information, which would be key for consumers, the specimen appears to merely be a mock-up for purposes of submission. This raises questions as to the validity of the application to which applicant must respond (see below).
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. 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 and (b) shows the mark in actual use in commerce for the goods identified in the application. 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 responds to the refusal, applicant must also respond to the requirement set forth below.
INFORMATION ABOUT SPECIMEN REQUIRED
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 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. Applicant must specifically state for the record whether it has used its proposed mark on the identified goods continuously in commerce regulated by the United States since the application filing date.
2. For each specimen submitted, applicant must clearly provide the common commercial name for the goods to which such specimen relates in order to permit proper examination of the goods.
3. Applicant must specifically state for the record whether the goods shown by the specimen submission or submissions actually bear the proposed mark in the exact manner shown when sold in U.S. commerce.
4. Applicant must describe how the specimen submission or submissions were selected or obtained in order to be used as specimens of use in the filing of this application.
5. Applicant must provide evidence of the retail, wholesale, or other sales environment in which the goods are sold, including submitting addresses and contact information for confirmation purposes.
6. Applicant must submit copies of invoices, bills of sale, or other documentation of sales in U.S. commerce of the listed goods in this application bearing the proposed mark, redacting personal or private information of buyers, as necessary.
7. If the goods shown in the specimen or specimens with the proposed mark are sold in physical stores, applicant must provide unedited digital images or photographs showing the goods bearing the proposed mark in store locations, the time and date taken, and the address of the store location. If these goods are sold in another type of sales environment, applicant must provide evidence showing the goods for sale in that environment, and provide the address of any physical location.
8. Please provide a detailed explanation on how applicant’s goods are transported for sale and provide documentation or other evidence showing how the proposed mark appears on the goods and/or its packaging when the goods are being transported for sale.
9. If these goods are available for sale online, applicant must provide images of websites showing the goods for sale in direct association with the proposed mark, including the complete URL address of the website shown so that it can be accessed by the USPTO to permit proper and complete examination of this application. For each webpage submission, either as a specimen or as supporting evidence, applicant must provide a digital copy of the entire webpages (including URL) from top to bottom, as rendered in an Internet browser, to permit proper and complete examination of this application and an accurate record of the entirety of the webpage submission.
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).
RESPONSE GUIDELINES
Any party who presents a document to the USPTO is subject to 37 C.F.R. §11.18(b). Thus, an attorney, applicant, or other party who signs or submits a document in connection with a trademark application is certifying that:
(1) All statements made in the document of the party’s own knowledge are true, all statements made on information and belief are believed to be true, and all statements made are made with the knowledge that, in any matter within the jurisdiction of the USPTO, any party who knowingly and willfully makes any false, fictitious, or fraudulent statements or representations, is subject to the penalties under 18 U.S.C. §1001, including fines and imprisonment;
(2) To the best of the party’s knowledge, information and belief, formed after an inquiry reasonable under the circumstances, the document is not being presented for any improper purpose;
(3) All allegations or other factual contentions in the document have evidentiary support or are likely to have evidentiary support after a reasonable opportunity for further investigation or discovery; and
(4) All denials of factual contentions in the document are warranted on the evidence or are reasonably based on a lack of information or belief.
See 37 C.F.R. §11.18(b); TMEP §§302, 611.01(a).
Violating 37 C.F.R. §11.18(b) may jeopardize the validity of an application and any resulting registration, and may lead the USPTO to impose sanctions and/or take other appropriate actions under 37 C.F.R. §11.18(c), which may include the following: rejecting the relevant document or according it less probative value; referring the practitioner’s conduct to the USPTO’s Office of Enrollment and Discipline for possible disciplinary action; excluding the practitioner or other party from practicing before, or otherwise submitting documents to, the USPTO; and requiring a party to be represented by a qualified practitioner in any current or future trademark matters before the USPTO.
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.
/Steven W. Ferrell Jr./
Examining Attorney
Law Office 121
(571) 270-3424
steven.ferrell@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.