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:  July 04, 2019

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on May 15, 2019.

 

In a previous Office action dated November 15, 2018, the trademark examining attorney refused registration of the applied-for mark based on the following:  Trademark Act Section 2(d) for a likelihood of confusion with a registered mark and failure to show the applied-for mark in use in commerce with any of the specified goods.  In addition, applicant was required to satisfy the following requirements:  disclaimer requirement and payment of additional fee requirement.

 

Based on applicant’s response, the trademark examining attorney notes that the following requirements have been satisfied: disclaimer requirement and payment of additional fee requirement.  See TMEP §§713.02, 714.04. 

 

The cited registered mark has been cancelled.  Therefore, the Section 2(d) refusal has been obviated.  See TMEP §§713.02, 714.04. 

 

Further, the trademark examining attorney maintains and now makes FINAL the specimen refusal.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

SUMMARY OF ISSUES MADE FINAL that applicant must address:

 

• Specimen Refusal

 

SPECIMEN REFUSAL

 

Registration is finally refused because the specimen does not show the mark in the drawing in use in commerce in International Class 25, which is required in the application.  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).

 

As previously noted, the specimen submitted with the application displays the mark as KA$H KOW.  However, the drawing displays the mark as OFFICIAL KA$H KOW CLOTHING.  Thus, the mark on the specimen does not match the mark in the drawing because the mark on the specimen does not contain the words OFFICIAL and CLOTHING, while the mark in the drawing does contain these words.

 

Applicant has requested reconsideration of the specimen in light of materials submitted with applicant’s response and applicant’s submission of a disclaimer of the words OFFICIAL and CLOTHING.  The materials consist of screenshots of search engine results pages and screenshots of social media websites which contain images of applicant’s clothing and various references to applicant’s clothing and applicant indicates that the materials show that applicant’s specimen, using the words KA$H KOW, has been in use since 2012.

 

Neither the materials, nor the fact that applicant has disclaimed the words OFFICIAL and CLOTHING, render the specimen acceptable.

 

With respect to the materials, the specimen was deemed unacceptable because it did not show the applied-for mark, and instead, showed a version of the mark that was missing the words OFFICIAL and CLOTHING – not because it was unclear from the specimen thatr applicant has been using the specimen since 2012.  Therefore, the materials submitted for the purpose of demonstrating that applicant’s specimen using the words KA$H KOW has been in use since 2012 does not change that fact that the specimen, which does not show the applied-for mark, is not acceptable. 

 

With respect to the disclaimer, the fact that applicant has disclaimed the word OFFICIAL and CLOTHING does not mean that these words are removed from the mark and can be excluded from the mark on the specimen.  A “disclaimer” is a statement in the application record that an applicant does not claim exclusive rights to an unregistrable component of the mark.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965); TMEP §1213.  A disclaimer does not physically remove the disclaimed matter from the mark or otherwise affect the appearance of the mark.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d at 979, 144 USPQ2d at 433; TMEP §1213.

 

Applicant may respond to this refusal by satisfying one of the following:

 

(1)        Submit a different specimen (a verified “substitute” specimen) for each applicable international class that (a) shows the mark in the drawing in actual use in commerce for the goods and/or services in the application or amendment to allege use, and (b) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use.

 

Examples of specimens for goods include tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, and displays associated with the actual goods at their point of sale.  See TMEP §§904.03 et seq.  Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods.  TMEP §904.03(i). 

 

(2)        Submit a request to 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.

 

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.  Specifically, while the word CLOTHING could be deleted from the mark because it is the generic name for the goods, the deletion of the word OFFICIAL would materially alter the mark.  The word OFFICIAL indicates that the goods have been approved or authorized in some way, and the removal of the word OFFICIAL would change the commercial impression of the mark because the mark would no longer convey such approval or authorization of the goods.

 

For more information about drawings and instructions on how to satisfy these response options online using the Trademark Electronic Application System (TEAS) form, see the Drawing webpage.

 

FINAL RESPONSE OPTIONS

 

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).

 

How to respond.  Click to file a response to this final Office action and/or appeal it to the Trademark Trial and Appeal Board (TTAB).

 

 

/Jennifer D. Richardson/

Trademark Examining Attorney

Law Office 113

(571) 272-6153

jennifer.richardson@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.