To: | Cooper, Jason (jazjas2928@gmail.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88038394 - DLORAINE - N/A |
Sent: | 6/4/2019 2:27:33 PM |
Sent As: | ECOM109@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88038394
MARK: DLORAINE
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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: Cooper, Jason
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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: 6/4/2019
This Office Action is in response to the applicant’s communication filed on May 8, 2019, in which the applicant submitted a new verified specimen. Although the new specimen obviates the mark not on specimen, digitally altered specimen, and information about specimen required issues, as the reasons set forth below, this specimen is also unacceptable for showing use in commerce and applicant must respond to the new issue identified below.
The referenced application has been reviewed by the assigned trademark examining attorney. 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:
SPECIMEN UNACCEPTABLE-PREMATURE USE
Registration remains refused because the evidence shows that applicant has not used the applied-for mark in commerce in connection with the identified goods. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §2.88(a)(2)(i), (b)(1)(ii); see TMEP §§904, 1301.03(a). Initially, applicant submitted a specimen that appeared to be a digitally created image of the product and failed to show the mark on applicant’s International Class 18 goods, such as its “handbags” in use in commerce. In response to the May 6, 2019, Office Action, applicant submitted a new specimen showing the applied-for mark, however applicant also stated that “[t]he handbags will be for retail sales online and at op up shops” and that the actual items are not currently available for sale. See applicant’s May 8, 2019, response. Furthermore, applicant indicated that “[t]he product was created for submission with this application, not currently being sold”. Id. Therefore, the specimen does not support an allegation of use in commerce.
The use or display of a mark in the sale or advertising of goods and/or services before the goods are actually created or provided or the services rendered does not show use in commerce. See Couture v. Playdom, Inc., 778 F.3d 1379, 1380-82, 113 USPQ2d 2042, 2043-44 (Fed. Cir. 2015); In re Cedar Point, Inc., 220 USPQ 533 (TTAB 1983); TMEP §§904, 1301.03(a).
If applicant’s goods were being sold or transported or the services were being rendered in commerce before expiration of the deadline for filing a statement of use, applicant must submit the following:
(1) A substitute specimen showing the applied-for mark in use in commerce for the goods and/or services specified in the statement of use.
(2) The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “The substitute specimen was in use in commerce before the expiration of the deadline for filing the statement of use.” 37 C.F.R. §2.59(b)(2); TMEP §904.05; see 37 C.F.R. §2.193(e)(1). If submitting a substitute specimen requires an amendment to the dates of use, applicant must also verify the amended dates. 37 C.F.R. §2.71(c); TMEP §904.05.
If applicant did not use the applied-for mark in commerce within the time permitted for filing a statement of use, the application will be abandoned. See 37 C.F.R. §2.88(k); TMEP §1109.16(a).
RESPONSE GUIDELINES
For attorney referral information, applicant may consult the American Bar Association’s Consumers’ Guide to Legal Help; an online directory of legal professionals, such as FindLaw®; or a local telephone directory. The USPTO, however, may not assist an applicant in the selection of a private attorney. 37 C.F.R. §2.11.
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.
Carolyn Wlodarczyk
/Carolyn Wlodarczyk/
Trademark Examining Attorney
Law Office 109
571-272-9273
carolyn.wlodarczyk@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.