To: | Snap Inc. (tmadmin@kilpatricktownsend.com) |
Subject: | U.S. Trademark Application Serial No. 87982529 - SNAP - 1067000 |
Sent: | August 14, 2020 07:14:35 AM |
Sent As: | ecom114@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 87982529
Mark: SNAP
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Correspondence Address: KILPATRICK TOWNSEND & STOCKTON LLP |
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Applicant: Snap Inc.
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Reference/Docket No. 1067000
Correspondence Email Address: |
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NONFINAL 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). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: August 14, 2020
The referenced Statement of Use response has been reviewed by the assigned trademark examining attorney. Upon further review of the SOU in its entirety, applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
Summary of Issues
Mark Differs on Drawing and Specimen
Mark shown on drawing does not match mark on specimen. Registration is refused because the specimen does not show the mark in the drawing in use in commerce in International Classes 042 and 045, which is required in the statement of use. 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). The mark appearing on the specimen and in the drawing must match; that is, the mark in the drawing “must be a substantially exact representation of the mark” on the specimen. See 37 C.F.R. §2.51(a)-(b); TMEP §807.12(a).
In this case, the specimen displays the mark as SNAP KIT. However, the drawing displays the mark as SNAP. The mark on the specimen does not match the mark in the drawing because it conveys a different commercial impression to the potential purchaser. Applicant has thus failed to provide the required evidence of use of the mark in commerce. See TMEP §807.12(a).
Response option. Applicant may respond to this refusal by submitting a different specimen (a verified “substitute” specimen) that (a) shows the mark in the drawing in actual use in commerce for the goods and/or services in the statement of use, and (b) was in actual use in commerce prior to the expiration of the deadline for filing the statement of use.
Examples of specimens. Specimens for goods include a photograph of (1) the actual goods bearing the mark; (2) an actual container, packaging, tag or label for the goods bearing the mark; or (3) a point-of-sale display showing the mark directly associated with the goods. See 37 C.F.R. §2.56(b)(1), (c); TMEP §904.03(a)-(m). A webpage specimen submitted as a display associated with the goods must show the mark in association with a picture or textual description of the goods and include information necessary for ordering the goods. TMEP §904.03(i); see 37 C.F.R. §2.56(b)(1), (c).
Specimens for services must show a direct association between the mark and the services and include: (1) copies of advertising and marketing material, (2) a photograph of business signage or billboards, or (3) materials showing the mark in the sale, rendering, or advertising of the services. See 37 C.F.R. §2.56(b)(1), (c); TMEP §1301.04(a), (h)(iv)(C).
Any web page printout or screenshot submitted as a specimen, whether for goods or services, must include the webpage’s URL and the date it was accessed or printed. 37 C.F.R. §2.56(c).
The USPTO will not accept an amended drawing submitted in response to this refusal because the changes would materially alter the drawing of the mark in the original application or as previously acceptably amended. See 37 C.F.R. §2.72(a)-(b); TMEP §807.14.
In addition, applicant may not respond by withdrawing the statement of use. See 37 C.F.R. §2.88(f); TMEP §1109.17.
For more information about drawings and instructions on how to satisfy this response option using the online Trademark Electronic Application System (TEAS) form, see the Drawing webpage.
Specimen Refusal
Specifically, the applicant’s specimens do not show how the mark will be used in connection with providing user authentication services using single sign-on technology for online software applications and licensing of intellectual property, namely, user created avatars, graphical icons, symbols, fanciful designs, comics, phrases, and graphical depictions of people, places and things. First, the Class 042 specimens do not depict how the applicant will render user authentication services to access the online software applications. A specimen showing a login feature pertaining to how the software applications are accessed via a user authentication can better show how the mark is used in connection with services.
The specimens are also refused for the Class 045 services. The applicant states in its response that the licensing of intellectual property services are shown because they “let . . users bring their favorite internet avatar into an app and express themselves in fun new ways.” The ability of the user to access avatars is not an accurate depiction of licensing intellectual property services. The applicant must show that the potential consumer is actually purchasing the ability to license intellectual property. The ability of the user to access avatars is ancillary to using the applicant’s computer software application, however, it does not specifically depict the applicant rendering licensing services.
Examples of specimens. Specimens for services must show a direct association between the mark and the services and include: (1) copies of advertising and marketing material, (2) a photograph of business signage or billboards, or (3) materials showing the mark in the sale, rendering, or advertising of the services. See 37 C.F.R. §2.56(b)(2), (c); TMEP §1301.04(a), (h)(iv)(C). Any webpage printout or screenshot submitted as a specimen must include the webpage’s URL and the date it was accessed or printed. 37 C.F.R. §2.56(c).
Response option. 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 services 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 filing a statement of use.” The substitute specimen cannot be accepted without this statement.
Applicant may not withdraw the statement of use. See 37 C.F.R. §2.88(f); TMEP §1109.17.
For an overview of this response option and instructions on how to submit a different specimen using the online Trademark Electronic Application System (TEAS) form, see the Specimen webpage.
Applicant’s mark does not function as a Service Mark
The applied-for mark, as shown on the specimen, does not function as a service mark because the applicant has not demonstrated how the mark will be used in connection with the services identified in the application. Since an application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark as actually used in commerce for each international class of services identified in the statement of use, the applicant has not satisfied this requirement to show that the mark functions as a servicemark. 15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).
Not every designation used in the advertising or performance of services functions as a service mark, even though it may have been adopted with the intent to do so. In re Keep A Breast Found., 123 USPQ2d at 1879 (quoting Am. Velcro, Inc. v. Charles Mayer Studios, Inc., 177 USPQ 149, 154 (TTAB 1973)); see TMEP §1301.02. A designation can only be registered when purchasers would be likely to regard it as a source-indicator for the services. TMEP §1301.02; see In re Moody’s Investors Serv. Inc., 13 USPQ2d 2043, 2047-49 (TTAB 1989).
Here, the applicant has neither shown how it will render user authentication services for computer software applications nor licensing of intellectual property as a service to others.
The ability of the user to access avatars, bitmojis and stories on the computer application software does not show that the applicant is rendering licensing of intellectual property services and if so, then the applicant should provide a specimen that depicts that type of advertisement for purchase and/or purchase in commerce.
How to respond. Click to file a response to this nonfinal Office action.
Hines, Regina
/Regina C. Hines/
Law Office 114
571-272-9451
Regina.Hines@uspto.gov
RESPONSE GUIDANCE