To: | Venstar, Inc. (adanner@dannerip.com) |
Subject: | U.S. Trademark Application Serial No. 88111132 - SKYWEB - VEN1.TM.032 |
Sent: | April 09, 2020 11:25:41 PM |
Sent As: | ecom120@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88111132
Mark: SKYWEB
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Correspondence Address:
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Applicant: Venstar, Inc.
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Reference/Docket No. VEN1.TM.032
Correspondence Email Address: |
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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) and/or Electronic System for Trademark Trials and Appeals (ESTTA). A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action.
Issue date: April 09, 2020
This Office action is in response to applicant’s communication filed on March 10, 2020.
In a previous Office action dated October 11, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following: failure to show the applied-for mark in use in commerce with any of the specified goods.
In applicant’s response, the applicant revoked its attorney and appointed a new attorney. Since the response did not satisfy the specimen requirement, the trademark examining attorney maintains and now makes FINAL the requirement in the summary of issues below. See 37 C.F.R. §2.63(b); TMEP §714.04.
SUMMARY OF ISSUES MADE FINAL that applicant must address:
SPECIMEN REQUIREMENT
The specimen requirement is now made FINAL for the reasons set forth below. See 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a), 1301.04(d), (g)(i); 37 C.F.R. §2.63(b).
Applicant has not raised any argument or otherwise responded to the following requirement.
A display specimen for downloadable software (1) must show use of the mark directly associated with the goods and (2) such use be of a point-of-sale nature. 37 C.F.R. §2.56(b)(1). To show use of a point-of-sale nature, a specimen generally must provide sufficient information to enable the user to download or purchase the software from a website. See TMEP §904.03(a) (citing In re Azteca Sys., Inc., 102 USPQ2d 1955, 1957 (TTAB 2012)).
In this case, the specimen does not create an association between the mark and the software. See In re Sones, 590 F.3d 1282, 1286-89, 93 USPQ2d 1118, 1122-24 (Fed. Cir. 2009); In re Azteca Sys., Inc., 102 USPQ2d at 1957; TMEP §904.03(e), (i). Specifically, the specimen only has SKYWEB on it once and that instance does not create a connection to the applied-for goods.
Accordingly, such material is mere advertising, which is not acceptable as a specimen for goods. See In re Siny Corp., 920 F.3d 1331, 1336, 2019 USPQ2d 127099, at *2-3 (Fed. Cir. 2019) (citing Powermatics, Inc. v. Globe Roofing Prods. Co., 341 F.2d 127, 130, 144 USPQ 430, 432 (C.C.P.A. 1965)); see also Avakoff v. S. Pac. Co., 765 F.2d 1097, 1098, 226 USPQ 435, 436 (Fed. Cir. 1985); TMEP §904.04(b), (c).
Examples of specimens. Specimens for downloadable software include instruction manuals or screen printouts from (1) webpages showing (a) the mark associated with the software and (b) ordering or purchasing information or information sufficient to download the software, (2) the actual program while running that shows the mark in the title bar, or (3) launch screens that show the mark in an introductory message box that appears after opening the program. See TMEP §904.03(e), (i), (j). 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).
Response option. Applicant may respond to the 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 the mark in actual use in commerce for the software 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.
This requirement is now made FINAL.
How to respond. Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).
/Kerry A. Nicholson/
Trademark Examining Attorney
Law Office 120
Phone: (571) 272-5159
kerry.nicholson@uspto.gov
RESPONSE GUIDANCE