To: | Williams, Emory L (frank@fjcpllc.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88012172 - GTO - N/A |
Sent: | 11/9/2018 2:47:25 PM |
Sent As: | ECOM113@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88012172
MARK: GTO
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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: Williams, Emory L
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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: 11/9/2018
THIS IS A FINAL ACTION.
STATUS OF APPLICATION
Pursuant to TMEP §§705.01 and 713.02, applicant is advised of the following status of the application. Prior to issuance of this Final Office action, the following issues were outstanding with this application:
(1) Information About Specimen and Use in U.S. Commerce Required
(2) Request for Additional Specimens
In light of applicant’s October 25, 2018 Office action response, the examining attorney has determined the following:
(1) Applicant did not respond to the information requirement. Therefore, the information requirement is now made FINAL.
(2) Applicant did not provide all of the requested additional specimens. Therefore, the additional specimen requirement is now made FINAL. See 37 C.F.R. §2.63(b); TMEP §714.04.
SUMMARY OF ISSUES:
INFORMATION ABOUT SPECIMEN AND USE IN U.S. COMMERCE 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.
Based on the record evidence and analysis, no existing specimen submission appears to show the mark in actual use in commerce. Therefore, to permit proper examination of the application, applicant must respond to the following questions and submit additional information for the record about the specimen(s) and how the mark as shown on the specimen(s) is in use in commerce with applicant’s goods. See 37 C.F.R. § 2.61(b); TMEP § 814. This information is needed to determine if all of the goods have been “sold or transported in commerce” as required by the relevant provisions of the Trademark Act and to ascertain if the application is void. 15 U.S.C. §1127; 37 C.F.R. §2.71(d); see TMEP 1201.02(b). Applicant must provide a full translation of any submitted material that is not in English. 37 C.F.R. § 2.61(b).
(1) 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.
(2) Applicant must submit, redacting the personal or private information of any buyer, copies of invoices, bills of sale, or other documentation of sales in U.S. commerce of (a) the goods bearing the proposed mark as provided as specimen submissions and (b) other listed goods in this application that also bear the proposed mark to be provided as specimen submissions in responding to the Request for Additional Specimen Submissions.
(3) Applicant must specifically state whether the specimen or specimens show the applicant’s products, including the manner and placement of the proposed mark, as they are currently being sold to consumers in U.S. commerce.
(4) 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.
(5) If the information in the previous question 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.
(6) 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.
See 37 C.F.R. §2.61(b); TMEP §814. 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.
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 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 relevant information or the additional specimens of record. See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).
REQUEST FOR ADDITIONAL SPECIMENS
Given the wide variety and range of unrelated goods that applicant has listed in the application, applicant must submit additional specimens to allow for a complete and accurate examination of the application and assessment of the registrability of the subject mark, in accordance with Rule 2.61(b). 37 C.F.R. § 2.61(b); see TMEP § 904.01(a). Moreover, applicant must also support with verifiable evidence proper actual use in commerce of the mark for all goods requested here. 15 U.S.C. §§ 1051(a), 1127; 37 C.F.R. §§ 2.34(a)(1)(iv), 2.56; TMEP §§ 904, 904.07(a); cf. Grand Canyon W. Ranch LLC v. Hualapai Tribe, 78 USPQ2d 1696, 1698 (TTAB 2006) (“an applicant who bases its application on Section 1(a) (use in commerce) but who did not use the mark on some or all of the goods or services identified in the application may "cure" this problem by amending its basis to Section 1(b)”). The Trademark Act defines “commerce” as commerce that may be lawfully regulated by the U.S. Congress. See 15 U.S.C. §1127. “Use in commerce” means (1) the bona fide use of a 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 at their point of sale, and (3) the goods are actually sold or transported in commerce. See 15 U.S.C. §1127.
Please note that for every 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.
Applicant should submit specimens demonstrating use of the mark on all of the following goods:
1. Sweat shorts;
2. Swear suits;
3. Golf caps.
If applicant is unable to provide specimens to support use of these items, applicant must delete these entries, or amend the filing basis for those goods that were not in proper use as of the application filing date to an intent to use basis under Section 1(b). This option will later necessitate additional fees and filing requirements such as providing a specimen for these goods at a subsequent date.
RESPONSE GUIDELINES
Applicant must respond within six months of the date of issuance of this final Office action or the application will be abandoned. 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a). Applicant may respond by providing one or both of the following:
(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).
Please call or email the assigned trademark examining attorney with questions about this Office action. Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the requirements in this Office action. See TMEP §§705.02, 709.06. Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
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.
/Jacob Vigil/
Examining Attorney
Law Office 113
(571) 270-3586
Jacob.Vigil@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.