To: | Jeffrey Roth (info@wdsproducts.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88118965 - WDS - N/A |
Sent: | 3/1/2019 4:12:24 PM |
Sent As: | ECOM121@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88118965
MARK: WDS
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Jeffrey Roth
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW. A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.
ISSUE/MAILING DATE: 3/1/2019
This Office action is in response to applicant’s February 22, 2019 Request for Reconsideration.
In a January 3, 2019 FINAL Office action, the trademark examining attorney refused registration of the applied-for mark for a Specimen Refusal as the specimen was not verified. Applicant was also required to properly verify their application.
In applicant’s Request for Reconsideration, applicant properly verified the application; this requirement is satisfied. In response to the Specimen Refusal, applicant failed to verify the specimen they submitted on December 29, 2018, which was proper and would have resulted in the application being ready for publication. Applicant also amended their identification of goods and submitted new specimens. This identification amendment renders the goods beyond the scope of the original identification. The amendment is not allowable. This is a new issue, which is why a new non-final is now being issued. This is explained the body of the Office action. The Specimen Refusal is maintained and continued.
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:
NEW ISSUE: Identification Amendment is Beyond the Scope of the Original
In this case, the application originally identified the goods as follows: Class 16: Printed paper signs
However, the proposed amendment identifies the following goods: Class 16: Scratch off maps, chalkboard signs
This proposed amendment is beyond the scope of the original identification because chalkboard signs are not made of paper, and it is not clear that scratch off maps are made of paper.
As stated above, the original identification in the application, and any previously accepted amendments, remain operative for purposes of future amendment. See 37 C.F.R. §2.71(a); TMEP §1402.07(d). The identification remains: “Printed paper signs”.
MAINTAINED AND CONTINUED: Specimen Refusal
Regarding the newly submitted specimens: Registration is refused because the specimen does not show the applied-for mark in use in commerce in connection with any of the goods and/or services specified in International Class 16 in the application or amendment to allege 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); In re Keep A Breast Found., 123 USPQ2d 1869, 1876-79 (TTAB 2017); In re Graystone Consulting Assocs., Inc., 115 USPQ2d 2035, 2037-38 (TTAB 2015); TMEP §§904, 904.07(a), 1301.04(d), (g)(i). Specifically, the specimens depict chalkboard signs and scratch off maps. The original identification, printed paper signs, is the identification of record. Thus, the specimens fail to depict the mark in use in commerce in connection with paper signs.
Regarding the specimen submitted on 12/28/2018: This specimen DID show applicant’s mark in use in commerce in connection with their Class 16 goods. The issue with the specimen was that it was not verified. Applicant must provide a properly verified specimen showing the mark in use in commerce for applicant’s goods. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.56(a), 2.63(b), 2.88(b)(2); TMEP §§904, 904.07(a), 1301.04(g)(i).
On December 28, 2018, in response to each refused international class, applicant provided a substitute specimen that appears to show use of the applied-for mark in commerce but is not verified. The USPTO does not accept materials submitted as specimens without proper verification. See 37 C.F.R. §2.59(b)(2); In re Adair, 45 USPQ2d 1211, 1212 n.2 (TTAB 1997).
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 final specimen refusal by satisfying one of the following for each applicable international class:
(1) Submit a verification of the previously submitted December 28, 2019 substitute specimen, attesting that it was in actual use in commerce prior to the expiration of the deadline for filing 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 a statement of use.” The substitute specimen cannot be accepted without this statement.
(2) Submit 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. The substitute specimen cannot be accepted without the verified statement referenced in (1).
For an overview of both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/specimen.jsp.
Applicant May Wish to Seek Trademark Counsel
For attorney referral information, applicant may consult the American Bar Association’s Consumers’ Guide to Legal Help; an online directory of legal professionals, such as FindLaw®; or a local telephone directory. The USPTO, however, may not assist an applicant in the selection of a private attorney. 37 C.F.R. §2.11.
Response to Office Action
Response guidelines. For this application to proceed, applicant must explicitly address each refusal and/or 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.
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.
Rosen, Amanda
/Amanda Rosen/
Examining Attorney
Law Office 121
571-270-5984
Amanda.Rosen@USPTO.gov
TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.
All informal e-mail communications relevant to this application will be placed in the official application record.
WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.
PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.