To: | RichRock Medical Solutions (alichy@lichylaw.com) |
Subject: | U.S. Trademark Application Serial No. 88062494 - STAT - 108 |
Sent: | June 09, 2020 12:18:07 PM |
Sent As: | ecom110@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88062494
Mark: STAT
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Correspondence Address:
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Applicant: RichRock Medical Solutions
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Reference/Docket No. 108
Correspondence Email Address: |
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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: June 09, 2020
This Office action is in response to applicant’s communication filed on 5-13-20.
In a previous Office action(s) dated 11-14-19, the trademark examining attorney refused registration of the applied-for mark based on the following: failure to show the applied-for mark in use in commerce with any of the specified goods. The trademark examining attorney maintains and now makes FINAL the refusal below. See 37 C.F.R. §2.63(b); TMEP §714.04.
Specimen
Specifically, the refusal to register the applied-for mark in International Class(es) 9 is now made final because applicant failed to provide in response to the refusal a properly verified specimen showing the mark as actually used in commerce for applicant’s goods. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.56(a), 2.63(b); TMEP §§904, 904.07(a), 1301.04(g)(i). A statement of use must include a specimen, properly verified, showing the applied-for mark as actually used in commerce for each international class of goods and/or services identified in the statement of use. 15 U.S.C. §1051(d)(1); 37 C.F.R. §2.56(a); TMEP §§904, 1109.09(b).
The original specimen filed with the statement of use is the only verified specimen of record. This specimen fails to evidence use for the goods, per the first action, because the software program appears to be for use in advertising jobs and applying for jobs rather than “business networking.” Thus, the specimen does not show use for the software goods applied for.
Furthermore, it is unclear that the images included in the response would function as a trademark for the software goods applied for if they were properly made of record. The images appear to be of website pages which would indicate that the “goods” are actually class 42 online software services. If applicant elects to respond to the refusal to register with a substitute specimen which shows use for class 42 software services applicant must amend the description of goods/services. Applicant may state “class 42—providing on-line, non-downloadable, computer application software for use across a variety of on-line platforms, namely software for business networking.
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).
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). 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 options. Applicant may respond to this refusal by satisfying one of the following for each applicable international class:
(1) Submit a different specimen (a verified “substitute” specimen) that (a) 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 and (b) shows the mark in actual use in commerce for the goods identified in the application or amendment to allege 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 at least as early as the filing date of the application or prior to the filing of the amendment to allege use.” The substitute specimen cannot be accepted without this statement.
(2) Amend the filing basis to intent to use under Section 1(b) (which includes withdrawing an amendment to allege use, if one was filed), as no specimen is required before publication. This option will later necessitate additional fee(s) and filing requirements, including a specimen.
For an overview of the response options referenced above and instructions on how to satisfy these options using the online Trademark Electronic Application System (TEAS) form, see the Specimen webpage.
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).
/Daniel F. Capshaw/
Daniel F. Capshaw
Examining Attorney
Law Office 110
571-272-9356
daniel.capshaw@uspto.gov
RESPONSE GUIDANCE