| To: | Pan Ting (huanyee@huanyee.com) |
| Subject: | U.S. Trademark Application Serial No. 88113216 - DELPICCO - N/A |
| Sent: | September 03, 2019 05:55:27 PM |
| Sent As: | ecom122@uspto.gov |
| Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 88113216
Mark: DELPICCO
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Correspondence Address: |
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Applicant: Pan Ting
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Reference/Docket No. N/A
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) 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: September 03, 2019
INTRODUCTION
This Office action is supplemental to and supersedes the previous Office action issued on January 2, 2019 in connection with this application. Based on the new U.S.-licensed Attorney rule that went into effect on August 3, 2019, the trademark examining attorney now issues the following new requirement: Representation by a U.S.-licensed Attorney Required. See 37 C.F.R. §§2.2(o), 2.11(a); TMEP §§706, 711.02.
In a previous Office action dated January 2, 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 addition, applicant was required to satisfy the following requirements: Provide information about the specimen submitted; provide a translation statement; clarify the identification of goods.
On August 2, 2019, applicant submitted a petition to revive the abandoned application.
The following is a SUMMARY OF ISSUES that applicant must address:
· NEW ISSUE: U.S.-Licensed Attorney Representation – Requirement
· Continued and Maintained: Specimen – Refusal
· Continued and Maintained: Information About Specimen Required
· Translation Statement – Requirement
· Identification of Goods – Clarification Requirement
Applicant must respond to all issues raised in this Office action and the previous January 2, 2019 Office action, within six (6) months of the date of issuance of this Office action. 37 C.F.R. §2.62(a); see TMEP §711.02. If applicant does not respond within this time limit, the application will be abandoned. 37 C.F.R. §2.65(a).
NEW ISSUE: U.S.-LICENSED ATTORNEY REPRESENTATION – REQUIREMENT
Applicant must be represented by a U.S.-licensed attorney. The application record indicates that applicant’s domicile is outside of the United States in China, but no attorney who is an active member in good standing of the bar of the highest court of a U.S. State or territory has been appointed to represent the applicant in this matter. All applicants whose permanent legal residence or principal place of business is not within the United States or its territories must be represented by a U.S.-licensed attorney at the USPTO. 37 C.F.R. §§2.2(o), 2.11(a). Thus, applicant is required to be represented by a U.S.-licensed attorney and must appoint one. 37 C.F.R. §2.11(a). This application will not proceed to registration without such appointment and representation. See id. See Hiring a U.S.-licensed trademark attorney for more information.
To appoint or designate a U.S.-licensed attorney. To appoint an attorney, applicant should (1) submit a completed Trademark Electronic Application System (TEAS) Revocation, Appointment, and/or Change of Address of Attorney/Domestic Representative form and (2) promptly notify the trademark examining attorney that this TEAS form was submitted. Alternatively, if applicant has already retained an attorney, the attorney can respond to this Office action by using the appropriate TEAS response form and provide his or her attorney information in the form and sign it as applicant’s attorney. See 37 C.F.R. §2.17(b)(1)(ii).
Registration is refused because the specimen in International Class 21 Registration is refused because the specimen does not show the applied-for mark in use in commerce in International Class 21. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a). Specifically, the original specimen appears to consist of a digitally altered image or a mock-up of the mark on the goods or their packaging and does not show the applied-for mark in actual use in commerce. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).
The original specimen appears to show the mark on a cosmetic brush. However, the background area of the lettering shows additional pixilation with slightly different coloring from the rest of the brush that indicates that the mark is digitally superimposed onto the good. This specimen therefore constitutes a mock-up that does not show actual use of the mark on goods that have been actually sold or transported in commerce.
An image of a product or packaging that has been digitally created or otherwise altered to include the mark does not show actual use of the mark in commerce. See 15 U.S.C. §1127; TMEP §§904.04(a), 904.07(a); cf. In re Chica, Inc., 84 USPQ2d 1845, 1848 (TTAB 2007) (holding that “a mere drawing of the goods with an illustration of how the mark may be displayed” was not an acceptable specimen because it did not show actual use in commerce); In re The Signal Cos., 228 USPQ 956, 957-58 n.4 (TTAB 1986) (noting that a printer’s proof of an advertisement would not be an acceptable specimen because it does not show actual use in commerce).
An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of goods identified in the application or amendment to allege 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). “Use in commerce” means (1) a bona fide use of the applied-for mark in the ordinary course of trade (and not merely to reserve a right in the mark), (2) the mark is placed in any manner on the goods, packaging, tags or labels affixed to the goods, or displays that directly associate the mark with the goods and have a point-of-sale nature, and (3) the goods are actually sold or transported in commerce. See 15 U.S.C. §1127.
Examples of specimens for goods include tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, and displays associated with the actual goods at their point of sale. See TMEP §§904.03 et seq. Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods. TMEP §904.03(i).
Applicant may respond to this refusal by satisfying one of the following for each applicable international class:
(1) Submit a true copy of the webpage specimen submitted with the Petition to Revive that is clear and readable that does not contain digitally altered images or mock-ups of the mark on the goods, with a statement by the person who transmitted it that it is a true copy of the specimen that was originally submitted.
(2) Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the goods and/or services identified in the application or amendment to allege 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 at least as early as the filing date of the application or prior to the filing of the amendment to allege use.” The substitute specimen cannot be accepted without this statement.
(3) Amend the filing basis to intent to use under Section 1(b), for which no specimen is required. This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.
For an overview of all the response options referenced above and instructions on how to satisfy these options online using the Trademark Electronic Application System (TEAS) form, see the Specimen webpage.
INFORMATION ABOUT SPECIMEN REQUIRED
To permit proper examination of the application record for compliance with use in commerce requirements, applicant must respond to the following requests for information and documentation about the specimen(s). See 37 C.F.R. §2.61(b); TMEP §814. Answer for each specimen/photograph/image previously provided. For any website source submitted as supporting evidence, provide a digital copy of the entire webpage from top to bottom, as rendered in an Internet browser, that includes the URL and access or print date. TMEP §710.01(b) (citing In re I-Coat Co., 126 USPQ2d 1730, 1733 (TTAB 2018)).
(1) Identify the particular good(s) listed in the application for which the specimen(s) was submitted to show use of the mark.
(2) Was the specimen created for submission with this application? If so, specify the date each specimen was created. If applicant obtained the image(s) of the goods shown in the specimen(s) from a third-party website, provide the URL of the website and a digital copy of relevant webpage(s) for each image.
(3) Provide information about and examples of how applicant’s goods appear in the actual sales environment.
(a) If sold in stores, provide a representative sample of the name(s) of the stores and of photographs showing the goods for sale in the named stores, such as photographs of the sales displays or goods on shelves with the mark.
(b) If sold online, provide a representative sample of the name(s) of the online retailers, the website URL(s) for each named retailer, and a digital copy of the webpages showing the goods for sale on the named website.
(c) If sold in another type of sales environment (e.g., catalogs, trade shows), identify the environment and provide photographs and/or documentation showing the goods for sale in that environment.
(4) If the information in question (3) about how the goods appear in the actual sales environment is not available to applicant, please describe how applicant’s goods are sold or transported and provide photographs and other documentation showing how applicant’s mark appears on the goods and/or its packaging when the goods are sold or transported to or within the United States.
(5) For each category of sales environment specified in response to questions (3) and (4), specify when the goods bearing the mark were first available for purchase within the United States, the date of the first sale of the goods to or within the United States, and whether the goods are still for sale to or within the United States in that environment.
(6) For the goods identified in response to question (1), specify the dollar amount of sales with or within the United States and provide at least three invoices or other supporting documentation that show payments or other consideration made, redacting personal or private information of buyers as necessary.
If applicant submits a verified substitute specimen, applicant must also fully respond to all the requirements for information and documentation. Failure to comply with a requirement to furnish information is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814. Merely stating that evidence is available on applicant’s or a third party website or providing a hyperlink of such a website is an insufficient response and will not make the additional information or materials of record. See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004). However, amending the application filing basis to intent-to-use under Section 1(b) will resolve the requirements for information and documentation.
TRANSLATION STATEMENT – REQUIREMENT
IDENTIFICATION OF GOODS – CLARIFICATION REQUIREMENT
Applicant must correct the punctuation in the identification of goods to clarify the individual items in the list of goods and/or services. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01(a). Proper punctuation in identifications is necessary to delineate explicitly each product or service within a list and to avoid ambiguity. Commas, semicolons, and apostrophes are the only punctuation that should be used in an identification of goods and/or services. TMEP §1402.01(a). An applicant should not use colons, periods, exclamation points, and question marks in an identification. Id. In addition, applicants should not use symbols in the identification such as asterisks (*), at symbols (@), or carets. Id.
In general, commas should be used in an identification (1) to separate a series of related items identified within a particular category of goods or services, (2) before and after “namely,” and (3) between each item in a list of goods or services following “namely” (e.g., personal care products, namely, body lotion, bar soap, shampoo). Id. Semicolons generally should be used to separate a series of distinct categories of goods or services within an international class (e.g., personal care products, namely, body lotion; deodorizers for pets; glass cleaners). Id.
Therefore, for clarity purposes, applicant must delete the comma following the word “wine” in the entry “Household strainers for juice, tea, wine,” in the identification of goods.
Suggested Amendment
Applicant may substitute the following wording, if accurate:
International Class 21: Aerosol dispensers, not for medical purposes; Coffee services in the nature of tableware; Confectioners' decorating bags; Cookery moulds; Cosmetic brushes; Eyebrow brushes; Eyelash brushes; Ice cube molds; Kitchen containers; Sprinklers for watering flowers and plants; Syringes for watering flowers and plants; Toilet sponges; Household strainers for juice, tea, wine; Household utensils, namely, graters; Household utensils, namely, skimmers
Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Generally, any deleted goods and/or services may not later be reinserted. See TMEP §1402.07(e).
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
ASSISTANCE
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 final Office action and/or appeal it to the Trademark Trial and Appeal Board (TTAB)
Young Wolfe
/Young Wolfe/
Trademark Examining Attorney
Law Office 122
571-272-5579
young.wolfe@uspto.gov
RESPONSE GUIDANCE