Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

FINAL 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) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

 

Issue date:  March 24, 2020

 

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on March 2, 2020.

 

In a previous Office action dated August 29, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following:  Mark not used in commerce prior to expiration of the statutory period for filing the statement of use.

 

Applicant submitted substitute specimens in its response of March 2, 2020.  However, those substitute specimens are not accepted for the reasons set forth below.

 

The trademark examining attorney maintains and now makes FINAL the refusal in the summary of issues below.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

SUMMARY OF ISSUES MADE FINAL that applicant must address:

• Refusal:  Mark not used in commerce prior to expiration of the statutory period for filing the statement of use

 

1. REFUSAL:  MARK NOT USED IN COMMERCE PRIOR TO EXPIRATION OF THE STATUTORY PERIOD FOR FILING THE STATEMENT OF USE

 

Specimen does not show use in specific classes.  Registration is refused because the specimen does not show the applied-for mark as actually used in commerce in connection with any of the goods and services specified in International Classes 9 and 41.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); In re Keep A Breast Found., 123 USPQ2d 1869, 1876-79 (TTAB 2017); TMEP §§904, 904.07(a), 1301.04(d), (g)(i).  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 goods and services identified in the statement of 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); see In re Gulf Coast Nutritionals, Inc., 106 USPQ2d 1243, 1247 (TTAB 2013).

 

An applicant must provide dates of use that show use of the mark in commerce before the expiration of the statutory period for filing the statement of use.  See 37 C.F.R. §§2.71(c)(2), 2.88(e); TMEP §1109.09-.09(a). 

 

In this case, the Notice of Allowance was issued on January 22, 2019.  The specimen submitted on July 22, 2019 for International Class 9 was purported to be a screenshot of Applicant's downloadable game software.  However, the specimen submitted for International Class 41, which is screenshots of web pages showing the mark in connection with the services, includes a Twitter page that states that NOSTOS is expected to launch in “Q3 of 2019,” or third-quarter of 2019, and references the “Nostos Alpha Test” occurring in “May.” A second page in that specimen, from YouTube, mentions playing NOSTOS in the “alpha version.” Accordingly, a refusal was issued in the Office action dated August 29, 2019 because applicant’s game did not launch before the expiration of the time allowed for filing a statement of use.  Therefore, the goods in International Class 9 were not available for first use in commerce in time to satisfy the statement of use. 

 

Likewise, a refusal was issued for the specimens submitted for International Class 41.  Because the specimen referred to a game that did not launch, it was merely advertising for the future game.  Advertising of services alone does not sufficiently support registration based on use in commerce; the services must also be rendered in commerce.  See 15 U.S.C. §1127; Couture v. Playdom, Inc., 778 F.3d 1379, 1380-82, 113 USPQ2d 2042, 2043-44 (Fed. Cir. 2015); Aycock Eng’g, Inc. v. Airflite, Inc., 560 F.3d 1350, 1356-60, 90 USPQ2d 1301, 1305-08 (Fed. Cir. 2009); TMEP §§901.01, 903.02, 1301.03(a), (b). 

 

In the response of March 2, 2020, applicant submitted substitute specimens that do not obviate the refusals from the August 29, 2019 Office action because those substitute specimens do not show that applicant used the mark in commerce before the expiration of the statutory period for filing the statement of use.

 

For International Class 9, applicant submitted what is described as a “screenshot of Applicant's downloadable software.”  The specimen does not have any information on it indicating the date it was taken or when it was first available in commerce.  For International Class 41, applicant submitted what is described as “screenshots of web pages showing the mark in connection with the services "Entertainment services, namely, providing on-line computer games; Provision of information relating to electronic computer games provided via the Internet; Providing online news and information in the field of computer games; Arranging and conducting computer game competitions".”  The screenshots of web pages do not show the URL they were taken from nor the date the screenshots were taken.  Applicant states that each was in use in commerce prior to the expiration of the filing deadline for filing a Statement of Use.

 

A review of applicant’s Facebook page at http://www.facebook.com/pg/Nostosgame/posts/ reveals a post dated December 6, 2019 that states that “Nostos” was officially launched at 4:00 P.M., 12/06/2019 (PST).”  The attached screenshots from STEAM, which allows users to purchase the game, and from ARTHANDS-VR, confirms the December 6, 2019 release date for NOSTOS. 

 

Based upon the aforementioned screenshots, applicant’s substitute specimens are not acceptable because they do not show use in commerce as the information and statements provided by applicant in the response is contradicted by the release date information from the above mentioned websites and there was no additional information provided with the specimens to show that the goods and services were used in commerce beforehand.  The only item in the specimens that shows a date is located on Page 5 of the specimen, which contains what appears to be a screenshot from Instagram that appears to be dated October 31, 2018, but that screenshot appears to be in the nature of advertising for the future game.  As explained above, advertising of services alone does not sufficiently support registration based on use in commerce; the services must also be rendered in commerce, which was not done at that time according to the evidence showing the December 6, 2019 release date. 

 

Further, the specimen provided for International Class 41 is not acceptable because any webpage 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).  None of the screenshots submitted as part of the specimen had either, nor was that information included in the March 2, 2020 response. 

 

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)(2), (c); TMEP §1301.04(a), (h)(iv)(C). 

 

Any webpage 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).

 

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 goods and/or 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.  

 

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).

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.

 

Response guidelines.  For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  For a requirement, applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal in this Office action.  See TMEP §§705.02, 709.06. 

 

The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

How to respond.  Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).

 

 

Edward Germick

/Edward J. Germick/

Examing Attorney

Law Office 102

(571) 272-5862

edward.germick@uspto.gov

 

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on March 24, 2020 for

U.S. Trademark Application Serial No. 88043447

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

Edward Germick

/Edward J. Germick/

Examing Attorney

Law Office 102

(571) 272-5862

edward.germick@uspto.gov

 

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from March 24, 2020, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·         Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·         Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·         Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”