To: | Better Galaxy, LLC (tmdocketing@onellp.com) |
Subject: | U.S. Trademark Application Serial No. 88110789 - STEALTH - JIACO.003TM |
Sent: | June 10, 2021 01:44:38 PM |
Sent As: | ecom126@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88110789
Mark: STEALTH
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Correspondence Address: |
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Applicant: Better Galaxy, LLC
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Reference/Docket No. JIACO.003TM
Correspondence Email Address: |
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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: June 10, 2021
The statement of use 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.
SUMMARY OF ISSUES THAT APPLICANT MUST ADDRESS:
SPECIMEN REFUSAL
Specifically, applicant submitted a webpage advertisement as a specimen for goods. The identified goods are for “electric welding machines, namely, radio frequency seam welding machines.” The specimen does not show a retail store display for the identified goods, nor does it show the mark on the goods themselves. While the webpage does show a few machines, the applied-for mark is not apparent on the machines. One of the machines has the wording “JUKI” on it and another has what appears to be Chinese characters on it. An article of clothing has the mark on it, but clothing is not encompassed by the identified goods in Class 7. Accordingly, the specimen is unacceptable.
Advertising is not acceptable as a specimen for goods. See In re Yarnell Ice Cream, LLC, 2019 USPQ2d 265039, at *15-16 (TTAB 2019) (quoting In re Siny Corp., 920 F.3d 1331, 1336, 2019 USPQ2d 127099, at *2-3 (Fed. Cir. 2019)); see also Avakoff v. S. Pac. Co., 765 F.2d 1097, 1098, 226 USPQ 435, 436 (Fed. Cir. 1985); TMEP §904.04(b), (c). Advertising includes online advertising banners appearing on search-engine results pages or in social media, advertising circulars and brochures, price lists, and business cards. See TMEP §904.04(b).
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 on the specimen itself, within the TEAS form that submits the specimen, or in a verified statement under 37 C.F.R. §2.20 or 28 U.S.C. §1746 in a later-filed response. See 37 C.F.R. §2.56(c); TMEP §§904.03(i), 1301.04(a).
Response option. 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 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.
How to submit a verified specimen.
After opening the appropriate TEAS response form, answer “Yes” to form wizard question #2, click “Continue,” and provide the following for each relevant class for which a specimen is being submitted:
(1) Under the heading “Classification and Listing of Goods/Services/Collective Membership Organization,” check the box next to the following statement: “Check here to modify the current classification number; listing of goods/services/the nature of the collective membership organization; dates of use; and/or filing basis; or to submit a substitute specimen, a foreign registration certificate, or proof of renewal of a foreign registration. If not checked, the changes will be ignored.”;
(2) Attach specimen under “Specimen File” (attachment may not exceed 5 megabytes);
(3) Describe in the box below that location what the attached specimen consists of;
(4) Check the box below the specimen description next to the following statement (to ensure that the declaration language is inserted into the form): “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” [for an application based on Section 1(a), Use in Commerce] OR “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use” [for an application based on Section 1(b) Intent-to-Use].; and
(5) Follow the instructions within the form for signing. The form will require two signatures: one in the “Declaration Signature” section and one in the “Response Signature” section.
If submitting a substitute specimen requires an amendment to the dates of use, applicant must verify the amended dates with an affidavit or signed declaration under 37 C.F.R. §2.20. 37 C.F.R. §2.71(c); TMEP §904.05; see 37 C.F.R. §2.193(e)(1). For more information about dates of use and instructions for amending them using the online Trademark Electronic Application System (TEAS), see the Dates of Use webpage.
DOMICILE ADDRESS REQUIREMENT – ADDRESS OF RECORD UNACCEPTABLE
An individual applicant’s domicile is the place a person resides and intends to be the person’s principal home. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. A juristic entity’s domicile is the principal place of business, i.e., headquarters, where a juristic entity applicant’s senior executives or officers ordinarily direct and control the entity’s activities. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. An applicant whose domicile is located outside of the United States or its territories is foreign-domiciled and must be represented at the USPTO by a U.S.-licensed attorney qualified to practice before the USPTO under 37 C.F.R. §11.14. 37 C.F.R. §2.11(a).
The application record lists applicant as a juristic entity and specifies applicant’s domicile as a post office box instead of a street address. Please see the attached evidence showing “PMB” stands for “private mailbox” or “postal mail box.” Please also see the attached evidence showing the address of record is a third party mailbox service. In most cases, a post office box is not acceptable as a domicile address because it does not identify the location of applicant’s headquarters where the entity’s senior executives or officers ordinarily direct and control the entity’s activities. See37 C.F.R. §§2.2(o)-(p), 2.189; Examination Guide 4-19, at I.A.3. Thus, applicant must provide its domicile street address. See 37 C.F.R. §2.189. Alternatively, an applicant may demonstrate that the listed address is, in fact, the applicant’s domicile. Examination Guide 4-19, at I.A.3.
To provide documentation supporting applicant’s domicile. Open the correct TEAS response form and enter the serial number, answer “yes” to wizard question #3, and on the “Additional Statement(s)” page, below the “Miscellaneous Statement” field, click the button below the text box to attach documentation to support the address.
To provide applicant’s domicile street address. After opening the correct TEAS response form and entering the serial number, answer “yes” to wizard question #5, and provide applicant’s street address on the “Owner Information” page. Information provided in the TEAS response form will be publicly viewable.
If applicant wants to hide its domicile address from public view because of privacy or other concerns, applicant must have a mailing address that can be made public and differs from its domicile address. In this case, applicant must follow the steps below in the correct order to ensure the domicile address will be hidden:
(1) First submit a TEAS Change Address or Representation (CAR) form. Open the form, enter the serial number, click “Continue,” and
(a) Use the radio buttons to select “Attorney” for the role of the person submitting the form;
(b) Answer “Yes” to the wizard question asking, “Do you want to UPDATE the mailing address, email address, phone or fax number(s) for the trademark owner/holder?” and click “Continue;”
(c) On the “Owner Information” page, if the previously provided mailing address has changed, applicant must enter its new mailing address in the “Mailing Address” field, which will be publicly viewable;
(d) On the “Owner Information” page, uncheck the box next to “Domicile Address” and enter the new domicile address in the text box immediately below the checkbox.
(2) Then submit a TEAS response form to indicate the domicile address has been changed. Open the form and
(a) Answer “yes” to wizard question #3 and click “Continue;”
(b) Click on the “Miscellaneous Statement” box on the “Additional Statement(s)” page, and enter a statement in the text box immediately below the checkbox that the domicile address was previously changed in the CAR form.
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.
USPTO changed federal trademark rules to rename TEAS Reduced Fee (RF) application to “TEAS Standard” and to eliminate TEAS Regular application form. Current TEAS RF applicants will generally need to continue to meet similar application requirements. See Changes to the Trademark Rules of Practice to Mandate Electronic Filing Final Rule and Correction, 84 Fed. Reg. 37,081, 68,045, 69,330 (published July 31, 2019, effective Feb. 15, 2020) (codified at 37 C.F.R. pts. 2 & 7). And current TEAS Regular applicants must now provide an email address when submitting documents through TEAS, will generally be sent correspondence electronically from the USPTO, and will pay a filing fee of $350 per class when adding a class. See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a), 2.32(a)(2). For more information about these changes, see the Mandatory Electronic Filing webpage.
How to respond. Click to file a response to this nonfinal Office action.
/D. Zarick/
D. Zarick
Trademark Examining Attorney
Law Office 126
(571) 270-5013
diana.zarick@uspto.gov
RESPONSE GUIDANCE