To: | Pauza, Kevin (dt@dfwpatent.com) |
Subject: | U.S. Trademark Application Serial No. 88082825 - DST - M6365 |
Sent: | September 16, 2019 10:26:12 AM |
Sent As: | ecom101@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88082825
Mark: DST
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Correspondence Address: THE LAW OFFICE OF DANIEL V. THOMPSON, P.
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Applicant: Pauza, Kevin
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Reference/Docket No. M6365
Correspondence Email Address: |
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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). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: September 16, 2019
The statement of use 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.
Failure to Function Refusal- Specimen Refusal
A process, method or system is only a way of doing something, and is not generally a service. TMEP §1301.02(e). An applied-for mark that identifies only a process, style, method, or system is therefore not registrable as a service mark. In re HSB Solomon Assocs., LLC, 102 USPQ2d at 1270; In re Hughes Aircraft Co., 222 USPQ 263, 264 (TTAB 1984).
Whether a designation functions as a mark depends on the commercial impression it makes on the relevant public; that is, whether purchasers would likely regard it as a source-indicator for the services. See In re Keep A Breast Found., 123 USPQ2d 1869, 1879 (TTAB 2017) (quoting In re Eagle Crest Inc., 96 USPQ2d 1227, 1229 (TTAB 2010)); TMEP §1202. The specimen and any other relevant evidence of use is reviewed to determine whether an applied-for mark is being used as a service mark. In re Bose Corp., 546 F.2d 893, 897, 192 USPQ 213, 216 (C.C.P.A. 1976); In re Volvo Cars of N. Am., Inc., 46 USPQ2d 1455, 1459 (TTAB 1998). A specimen showing the applied-for mark referring solely to a process or system, and not to applicant’s services, is evidence that the relevant public would not regard the designation as a service mark. See In re Universal Oil Prods. Co., 476 F.2d at 655-56, 177 USPQ at 457.
In this case, the specimen shows the applied-for mark used solely to identify a process or system because the specimens have the language “The DST Method”, “DST (Discseel Method)”, “DST (Discseel) treatment has been researched since 2010 . . . ” shows that the mark is being used to refer to a method or way of treating back issues, but the specimens fail to show the mark used as a brand or source indicator for the applicant’s medical services.
Therefore, the specimens fail to show use of the mark in connection with the applicant’s Class 44 services.
The applicant could respond to this refusal by amending the application to an intent to use basis (and then the applicant would be required to show use of the mark at a later date), or by submitting a new specimen that does show use of the mark as a brand or source indicator for the applicant’s medical services.
Use- Request for Information
The specimen of use appears to indicate that the applicant is using the mark only in Japanese clinics, and there is no indication that the applicant is using the mark in the United States or in a type of commerce that the U.S. Congress may lawfully regulate. The Trademark Act defines “commerce” as all commerce “which may lawfully be regulated by [the U.S.] Congress.” 15 U.S.C. §1127; TMEP §901.01. Thus, applicant must clarify whether the mark is actually in use in this type of commerce. 15 U.S.C. §1127; see 37 C.F.R. §2.61(b); TMEP §§814, 901.04. For example, attached is a webpage that appears to indicate that patients must travel to Japan for the medical services featuring DST procedures. http://en.il-clinic.com/dst
For example, a service mark may be used in such commerce for services when: (1) services are rendered across state lines, in more than one state, or to out-of-state customers; (2) customers travel across state lines in response to advertising and the nature of the services is such that it has a substantial effect on interstate commerce (e.g., service stations on interstate highways); (3) an applicant’s licensees or franchisees are located in more than one state, and the licensees or franchisees use the mark; or (4) an applicant’s services are offered via the Internet. See TMEP §901.03.
Applicant may respond to this issue by explaining how the applicant uses the mark in connection with providing medical services in the United States--- AND--- satisfying one of the following:
(1) A verified statement in an affidavit or signed declaration under 37 C.F.R. §2.20 that “the mark is in use in commerce that can be regulated by the U.S. Congress.”
(2) A request to amend the application basis to a bona fide intention to use the mark in commerce under Trademark Act Section 1(b), if permitted by 37 C.F.R. §2.35.
TMEP §901.04.
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.
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.
How to respond. Click to file a response to this nonfinal Office action
/Laurie Mayes/
Trademark Examining Attorney
Law Office 101
(571) 272-5874; FAX (571) 273-9101
laurie.mayes@uspto.gov (NOT for responses)
RESPONSE GUIDANCE