Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

NON-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). A link to the appropriate TEAS response form appears at the end of this office action.

 

Issue date:  June 25, 2020

 

This office action is in response to applicant’s communication filed on June 7, 2020.

 

The matching refusal is withdrawn.

 

Applicant Must Submit A New Specimen

 

Specimen is merely a drawing or depiction of the mark. Registration is refused because the substitute specimen is merely a rendering of the applied-for mark and does not show the applied-for mark as actually used in commerce with the goods identified in the statement of use. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a), (c); In re Chica, 84 USPQ2d 1845, 1848 (TTAB 2007); TMEP §§904, 904.07(a), 1301.04(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/or 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). Specifically, applicant submitted a 46-page substitute specimen, and the mark appears only on page 2, on what appears to be artwork of covers.

 

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). 

 

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). It is noted that the substitute specimen does not include this information.

 

How to respond. 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.

 

Registration Refused – Title Of A Single Work

 

Registration was refused in the prior action because the applied-for mark, as used on the specimen of record, is used only as a portion of a title of a single creative work, namely, a portion of a title of a specific comic book. It does not function as a trademark to identify and distinguish applicant’s goods from those of others and to indicate the source of applicant’s goods. Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§1051-1052, 1127; see In re Scholastic, Inc., 23 USPQ2d 1774, 1776-79 (TTAB 1992); TMEP §§904.07(b), 1202.08; cf. Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1162-63, 64 USPQ2d 1375, 1378-79 (Fed. Cir. 2002); In re Cooper, 254 F.2d 611, 615-16, 117 USPQ 396, 399-400 (C.C.P.A. 1958). 

 

Single creative works include works in which the featured content does not change significantly, whether that work is in printed, recorded, or electronic form. TMEP §1202.08(a); see Mattel, Inc. v. Brainy Baby Co., 101 USPQ2d 1140, 1143-44 (TTAB 2011) (holding that LAUGH & LEARN, with design, was merely the title of a single work, where the mark was used as the title of a pre-recorded VHS tape and DVD, the VHS tape and DVD contained the same featured program, and the DVD contained “minor enhancements” such as bloopers and previews).

 

Applicant responded by submitting a substitute specimen that is not acceptable as discussed above and further does not show that the mark is used as anything other than the title of a single work. The refusal is therefore continued and maintained.

 

Applicant may respond to this refusal by submitting evidence that the applied-for mark (1) is used on a series of creative works, (2) creates a separate commercial impression apart from the complete title, and (3) is promoted or recognized as a mark for the series.  See In re Scholastic, Inc., 23 USPQ2d at 1776-78; TMEP §§1202.08(d) et seq.

 

Evidence of a series includes copies of at least two different book covers or packaging for recorded works (not two copies of the same work), with the mark used in all the titles. TMEP §1202.08(d)(ii). Evidence that a portion of a title is promoted or recognized as a mark for a series includes advertising that promotes that portion of the title as the source of the series, third-party reviews showing use of that portion of the title by others to refer to the series, and/or declarations from publishers, retailers, purchasers, or readers showing recognition of that portion of the title as an indicator of the source of a series of written works. See In re Scholastic, Inc., 23 USPQ2d at 1776-78; TMEP §1202.08(d)(iii).

 

Applicant may not withdraw the statement of use. 37 C.F.R. §2.88(f); TMEP §1109.17.

 

Applicant is invited to contact the assigned examining attorney with any questions regarding this action.

 

/Katherine S. Chang/

Trademark Examining Attorney

Law Office 115

571-270-1528

katherine.chang@uspto.gov

 

 

 

RESPONSE GUIDANCE

 

• How to respond: click to file a response to this non-final office action.

 

• For this application to proceed, applicant must explicitly address each refusal and 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.

 

• 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 law office referenced in the signature block.

 

 

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on June 25, 2020 for

U.S. Trademark Application Serial No. 88086433

 

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. 

 

 

/Katherine S. Chang/

Trademark Examining Attorney

Law Office 115

571-270-1528

katherine.chang@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 June 25, 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.”