United States Patent and Trademark Office (USPTO)

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

 

 

 

NONFINAL 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:  October 14, 2020

 

 

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.

 

Refusal to Register – Unacceptable Specimen: Failure to Function as a Trademark

 

Registration is refused because the applied-for mark, as used on the specimen of record, is used only as a trade name to identify applicant’s business; it does not function as a trademark to indicate the source of applicant’s goods and to identify and distinguish them from others.  Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§1051-1052, 1127; see In re Walker Process Equip. Inc., 233 F.2d 329, 332, 110 USPQ 41, 43-44 (C.C.P.A. 1956); TMEP §§904.07(b), 1202.01.  Although a designation may function as both a trade name and a trademark, the Trademark Act does not provide for registration of matter that functions solely as a trade name.  In re Supply Guys, Inc., 86 USPQ2d 1488, 1491 (TTAB 2008); In re Diamond Hill Farms, 32 USPQ2d 1383, 1384 (TTAB 1994); TMEP §1202.01.

 

The determination as to whether a trade name also functions as a trademark is based on the manner in which the applied-for mark is used on the specimen or any other evidence of use, as well as the probable impact of such use on purchasers.  In re Diamond Hill Farms, 32 USPQ2d at 1384; In re Univar Corp., 20 USPQ2d 1865, 1866 (TTAB 1991); TMEP §1202.01.  In this case, the specimen shows the applied-for mark used on a sticker at the bottom of the product packaging as a part of a phrase, “HOME OF TRUE ORGANICS.” It does not have the look or feel of a source indicator in the manner in which it appears in this instance. It appears to be the trade name of the applicant’s business, as opposed to the name of it’s trademark.

 

A trademark or service mark is used to identify and distinguish an owner’s goods and/or services from those of others and to indicate the source of the owner’s goods and/or services.  A trade name, however, identifies and distinguishes an owner’s business or vocation.  15 U.S.C. §1127; TMEP §1202.01.

 

Response Options

 

Response option.  Applicant may respond to this refusal by submitting 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 proper trademark use for the goods 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.

 

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).

 

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

 

For more information about 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.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

 

Contact Information

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06. 

 

The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

 

How to respond.  Click to file a response to this nonfinal Office action.    

 

 

Katina J. Joiner

/Katina J. Joiner/

Trademark Examining Attorney

Law Office 104

571-272-8889 (Office)

katina.jackson@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.