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: 11/21/2018

The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

SEARCH OF OFFICE’S DATABASE OF MARKS

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).

SUMMARY OF ISSUES:

· Specimen Refusal

· Information Requirement Specimen – Goods

· Information Requirement Specimen - Services

CURRENT SPECIMEN UNACCEPTABLE

Please note – the following refusal applies only to the goods in International Class 9.

Registration is refused because the specimen images appear to have been digitally created or altered or otherwise created as mock-ups to submit as a specimen in the application and thus does not show the applied-for mark in actual use in commerce. 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).

An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of goods identified in the application or amendment to allege 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). However, an image that has been digitally created or altered to show the applied-for mark on or in connection with applicant’s goods usually has not been disseminated to the public, and thus does not show actual use of the mark in commerce. See 15 U.S.C. §1127; TMEP §§904.04(a), 904.07(a); cf. In re Chica, Inc., 84 USPQ2d 1845, 1848 (TTAB 2007) (holding that “a mere drawing of the goods with an illustration of how the mark may be displayed” was not an acceptable specimen because it did not show actual use in commerce); In re The Signal Cos., 228 USPQ 956, 957-58 n.4 (TTAB 1986) (noting that a printer’s proof of an advertisement would not be an acceptable specimen because it does not show actual use in commerce).

In this case, the applicant seeks to register its mark “ELLIPAL” for a variety of goods in International Class 9. The specimen images show the applied-for mark appearing on an image with coded card and the generic image of CPUs with the applied-for mark appearing next to the image. The mark appears to be superimposed on the goods or otherwise fails to be actually affixed to the goods in a manner that is common and expected in industry practice for the respective goods. To illustrate, the specimen image shows blurring and pixilation of the mark where it appears on the goods. Additionally, the mark appears against a digitally created white background in each image. Thus, it appears the image has been digitally altered or created and the specimen fails to show actual use of the mark in commerce.

Typical examples of specimens for goods include tags and 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).

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 and/or services 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) specimens was/were in use in commerce at least as early as the filing date of the application.” The substitute specimen cannot be accepted without this statement.

(2) 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.

For an overview of both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, please go to http://www.uspto.gov/trademarks/law/specimen.jsp.

The applicant must also address the following requirements.

INFORMATION REQUIREMENT - GOODS

As noted above, the specimen images of record appear to be digitally created or altered, or otherwise merely present mock-up depictions of the mark on the goods. The specimen image(s) do(es) not appear to show the mark as actually used in commerce. Therefore, to permit proper examination of the application, applicant must submit additional information for the record about the specimen and how the mark as shown in the specimen is in use in commerce with applicant’s goods. See 37 C.F.R. §2.61(b); TMEP §814.

Accordingly, applicant must respond to the following questions and requests for documentation to satisfy this request for information:

(1) How are applicant’s goods sold? Specify the retail, wholesale, or other sales environment in which the goods are sold.

(2) Please provide copies of invoices, bills of sale, or other documentation of sales of the goods.

(3) Was the specimen created solely for submission with this application?

(4) Does the specimen show applicant’s product as it is currently being sold to consumers?

(5) How do applicant’s goods appear in the actual sales environment? If sold in stores, provide photos showing the goods for sale in the stores. If sold online, identify the websites and provide copies of the webpages showing the goods for sale. And if sold in another type of sales environment, provide photos and/or documentation showing the goods for sale in that environment.

(6) If the information in question (5) 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.

See 37 C.F.R. §2.61(b); TMEP §814.

Failure to comply with a request for information is grounds for refusing registration. In re AOP LLC, 107 USPQ2d 1644, 1651 (TTAB 2013) (citing In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re DTI P’ship LLP, 67 USPQ2d 1699, 1701-02 (TTAB 2003); TMEP §814). Merely stating that information is available on applicant’s website is an insufficient response and will not make the relevant information of record. See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).

INFORMATION REQUIREMENT - SERVICES

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 services only if it displays the mark in the sale, advertising, or rendering of the services, and the services are actually rendered in commerce. 15 U.S.C. §1127. Because the specimen of record appears to be digitally created or altered, or is otherwise a mock-up, it does not appear to show the mark as actually used in commerce. Therefore, to permit proper examination of the application, applicant must submit additional information for the record about the specimen and how the mark as shown in the specimen is in use in commerce with applicant’s services. See 37 C.F.R. §2.61(b); TMEP §814.

Accordingly, applicant must respond to the following questions and requests for documentation to satisfy this request for information:

(1) How are applicant’s services advertised or otherwise offered for sale? If advertised online, identify the websites and provide copies of the webpages showing the services for sale. If advertised in printed newspapers and publications, provide copies of the print advertisements. And if advertised or otherwise offered for sale using another method, provide documentation showing the services for sale using the other method.

(2) Was the specimen created for submission with this application?

(3) Does the specimen show applicant’s storefront and/or delivery vehicle as it currently appears in the rendering of the services?

(4) How is applicant’s mark used in the actual rendering or performing of the services? Provide photos and other documentation showing how applicant’s mark is actually used when the services are being rendered or performed.

(5) Please provide copies of invoices, bills of sale, or other documentation of sales of the services.

See 37 C.F.R. §2.61(b); TMEP §814.

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 information is available on applicant’s website is an insufficient response and will not make the relevant information of record. See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).

RESPONSE GUIDELINES

For this application to proceed toward registration, applicant must explicitly address each refusal and/or requirement raised in this Office action. If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register. Applicant may also have other options for responding to a refusal and should consider such options carefully. To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements.

In addition, applicant filed a TEAS Plus application and therefore must respond online using the Trademark Electronic Application System (TEAS) at http://www.uspto.gov/trademarks/teas/response_forms.jsp to avoid incurring an additional fee. See 37 C.F.R. §2.22(b)(1), (c).

If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end, the trademark will fail to register, and the application fee will not be refunded. See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a), 2.209(a); TMEP §§405.04, 718.01, 718.02. Where the application has been abandoned for failure to respond to an Office action, applicant’s only option would be to file a timely petition to revive the application, which, if granted, would allow the application to return to active status. See 37 C.F.R. §2.66; TMEP §1714. There is a $100 fee for such petitions. See 37 C.F.R. §§2.6, 2.66(b)(1).

APPLICANT MAY WISH TO HIRE TRADEMARK COUNSEL

Because of the legal technicalities and strict deadlines involved in the USPTO application process, applicant may wish to hire a private attorney specializing in trademark matters to represent applicant in this process and provide legal advice. Although the undersigned trademark examining attorney is permitted to help an applicant understand the contents of an Office action as well as the application process in general, no USPTO attorney or staff is permitted to give an applicant legal advice or statements about an applicant’s legal rights. TMEP §§705.02, 709.06.

For attorney referral information, applicant may consult the American Bar Association’s Consumers’ Guide to Legal Help at http://www.abanet.org/legalservices/findlegalhelp/home.cfm, an attorney referral service of a state or local bar association, or a local telephone directory. The USPTO may not assist an applicant in the selection of a private attorney. 37 C.F.R. §2.11.

In addition, foreign attorneys, other than authorized Canadian attorneys, are not permitted to represent applicants before the USPTO (e.g., file written communications, authorize an amendment to an application, or submit legal arguments in response to a requirement or refusal). See 37 C.F.R. §§2.17(e), 11.14(c), (e); TMEP §602.03-.03(c).

The only attorneys who may practice before the USPTO in trademark matters are as follows:

(1) Attorneys in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and other federal territories and possessions of the United States

(2) Canadian agents/attorneys who represent applicants located in Canada and (a) are registered with the USPTO and in good standing as patent agents or (b) have been granted reciprocal recognition by the USPTO

See 37 C.F.R. §§2.17(a), (e), 11.1, 11.14(a), (c); TMEP §602.

ASSISTANCE

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney. All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights. See TMEP §§705.02, 709.06.

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.

/Seth Willig Chadab/

Seth Willig Chadab

Trademark Examining Attorney

Law Office 104

(571) 270-1875

seth.chadab@uspto.gov

TO RESPOND TO THIS LETTER: Go to http://www.uspto.gov/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.uspto.gov/. 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.uspto.gov/trademarks/process/status/.

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.uspto.gov/trademarks/teas/correspondence.jsp.

To:	ELLIPAL LIMITED (ustms@hotmail.com)
Subject:	U.S. TRADEMARK APPLICATION NO. 88071143 - ELLIPAL - N/A
Sent:	11/21/2018 2:10:45 PM
Sent As:	ECOM104@USPTO.GOV
Attachments: