Offc Action Outgoing

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:  March 22, 2020

 

 

INTRODUCTION

 

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:

• Sections 1 and 45 Refusal – Mark Not Used in Commerce
• Information About Specimen Requirement
• Request for Additional Specimen Submissions

 

 

SECTIONS 1 AND 45 REFUSAL – MARK NOT USED IN COMMERCE

 

Digitally altered image or mockup is not an acceptable specimen.  Registration is refused because the specimen appears to consist of a digitally altered image or a mockup of a depiction of the mark on the goods or their packaging and does not show the applied-for mark as actually used in commerce in International Classes 007, 009, and 012.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a), (c); TMEP §§904, 904.07(a). 

 

Similarly, registration is refused because the specimen appears to consist of a digitally altered image or a mockup of a depiction of the mark on webpages and does not show the applied-for mark as actually used in commerce in International Classes 035, 037, 038, 042, and 045.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a), (c); TMEP §§904, 904.07(a), 1301.04(a), (g)(i). 

 

An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark as actually used in commerce for each international class of goods and services identified in the statement of 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).  For goods, “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.  For services, “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 used in the sale, advertising, or rendering of the services, and (3) the services are actually rendered in commerce.  Id.

 

An image of a product or packaging that has been digitally created or altered to include the mark or a mockup of how the mark may be displayed on the product or packaging is not a proper specimen for goods because it does not show actual use of the mark in commerce.  See 15 U.S.C. §1127; 37 C.F.R. §2.56(c); TMEP §904.04(a).  An image of a webpage that has been digitally created or altered to include the mark, or a mockup of how the mark may be displayed, is not a proper specimen for services because it does not show actual use of the mark in commerce.  Similarly, a website showing the mark for the services that applicant is not currently engaged in selling, advertising, or rendering is not a proper specimen.  See 15 U.S.C. §1127; 37 C.F.R. §2.56(c); TMEP §§904.07(a), 1301.04(g)(i).

 

In this case, the specimen shows images of various goods displaying the mark.  However, the mark appears digitally displayed on the images and not on the actual goods.  Additionally, the specimen shows screenshots of webpages displaying the mark.  However, attached evidence from Techabyte suggests that applicant’s webpages are mock-ups, as applicant’s webpages shown in the specimen use identical language and graphics used by Techabyte.  Therefore, the specimen does not show actual use of the mark in commerce. 

 

 

Additional information/documentation 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 webpage submission, either as a specimen or 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) and service(s) listed in the application for which the specimen(s) was submitted to show use of the mark.

 

(2)        Explain whether the specimen was created for submission with this application.  If so, specify the date each specimen was created.  If the applicant obtained the content of the webpage or image(s) of the mark in connection with the goods and services 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)        Provide information about how applicant advertises the services and representative examples from online or print sources showing how the mark appears in applicant’s advertising of the services.  Provide the name of the online or print source and a complete copy of the webpage(s) or print page(s) showing the services advertised for sale.  For each source, specify when the services were first advertised for sale and if the services are still advertised for sale in that environment.

 

(7)        For the services identified in response to question (6), specify the date the services were first rendered or provided to or within the United States, 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.

 

(8)        For the goods and services 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.

 

 

Response options.  Applicant may respond to the specimen refusal by satisfying one of the following for each applicable international class: 

 

(1)        Submit the additional information/documentation referenced above establishing that the original specimen was actually used in commerce prior to expiration of the filing deadline for filing a statement of use.

 

(2)        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 goods and services 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.  For instructions on how to submit a different specimen using the online Trademark Electronic Application System (TEAS) form, see the Specimen webpage.

 

Applicant must also fully respond to the requirement for additional information and documentation referenced above for any different specimen provided.  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 information 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).

 

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

 

 

REQUEST FOR ADDITIONAL SPECIMEN SUBMISSIONS

 

Applicant must submit additional specimens to allow for a complete and accurate examination of the application and assessment of the registrability of the subject mark, in accordance with Rule 2.61(b).  37 C.F.R. §§ 2.56(a), 2.61(b); see TMEP § 904.01(a); cf. Grand Canyon W. Ranch LLC v. Hualapai Tribe, 78 U.S.P.Q.2d 1696, 1698 (TTAB 2006) (“an applicant who bases its application on Section 1(a) (use in commerce) but who did not use the mark on some or all of the goods or services identified in the application may "cure" this problem by amending its basis to Section 1(b)”).  The Trademark Act defines “commerce” as commerce that may be lawfully regulated by the U.S. Congress.   See 15 U.S.C. § 1127.  For goods, “use in commerce” means (1) the bona fide use of a 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, or displays of the goods at their point of sale, and (3) the goods are actually sold or transported in commerce.  See 15 U.S.C. § 1127.  For services, “use in commerce” means (1) the bona fide use of a mark in the ordinary course of trade (and not merely to reserve a right in the mark), (2) the mark is used or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services.  Id.  Applicant must provide a full translation of any submitted material that is not in English.  37 C.F.R. § 2.61(b).

 

Please note that for every specimen submitted, Applicant must clearly provide the common commercial name for the goods and services to which such specimen relates in order to permit proper examination of the goods and services.

 

Applicant should submit specimens demonstrating use of the mark on all of the following goods and services:

 

International Class 007:

 

1. Sifting machines;
2. rice-grain sorting machines for industrial purposes;
3. Sorting machines for chemical processing;
4. Vending machines;
5. Elevating or lifting work platforms;
6. Automatic industrial labeling machines for applying labels to containers and bottles;
7. Industrial robots;
8. cargo handling machines, automatic;
9. Hoists;
10. Auxiliary power units for supplying electrical power;
11. Packaging machines;
12. Lifting installations for the transport of persons and goods;
13. Staged and segmented conveyors;
14. Starters for motors and engines

 

International Class 009:

 

1. Webcams;
2. Solid state videorecorders;
3. Memories for data processing equipment;
4. Servers for web hosting;
5. Computer memory devices;
6. Camcorders;
7. Video recorders;
8. Encoding and decoding apparatus;
9. Video monitors;
10. Audio- and video-receivers;
11. Horns for loudspeakers;
12. Microphones for communication devices;
13. Rechargeable batteries;
14. Lens hoods for cameras;
15. Optical lenses;
16. Electric cables and wires;
17. Radar apparatus;
18. Computer stands specially designed for holding a computer, printer and computer peripherals;
19. Optical lamps;
20. Video telephones;
21. Electronic access control systems for interlocking doors;
22. Digital door locks;
23. Biometric fingerprint door locks;
24. Burglar alarms;
25. Fire alarms;
26. Smoke detectors;
27. Electrical and electronic burglar alarms;
28. Infrared detectors;
29. Fire extinguishers;
30. Clothing for protection against accidents;
31. Shoes for protection against accidents and fire;
32. Computer peripheral devices;
33. Network routers;
34. Alarm monitoring systems;
35. Video projectors;
36. LCD large-screen displays;
37. Interactive touchscreen terminals;
38. Micro-processors;
39. Radio receivers and monitors for reproduction of sound and signals;
40. Telephone sets with screen and keyboard;
41. Video screens;
42. Solid state drives;
43. Rearview cameras for vehicles;
44. Portable video cameras with built-in videocassette recorders;
45. Electronic parking lot ticket dispensers;
46. Luminous or mechanical road signs;
47. Digital signage display panels;
48. Computer software for use as a spreadsheet and word processing, that may be downloaded from a global computer network;
49. Downloadable mobile applications for managing bank accounts, editing photos and making restaurant reservations;
50. Warning bells;
51. Electric door bells;
52. Blank electronic chip cards in the nature of blank smart cards;
53. Digital cameras for industrial use;
54. Camera containing a linear image sensor;
55. Security surveillance robots;
56. Humanoid robots with artificial intelligence

 

International Class 012:

 

1. Aircraft;
2. Jet aircraft;
3. Amphibious airplanes;
4. Civilian drones;
5. Vehicles for locomotion by land, air, water or rail, namely, automobiles, airplanes, ships and freight trains;
6. Rolling stock for railways;
7. Bicycles;
8. Cars;
9. Trolleys;
10. Boats;
11. Upholstery for vehicles;
12. Pilotless aircraft;
13. Driverless cars;
14. Automatic guided vehicles;
15. Automatically guided driverless material handling tractors;
16. Camera drones, other than toys;
17. Aeronautical apparatus, machines and appliances, namely, aircraft;
18. Military drones;
19. Photography drones

 

International Class 035:

 

1. Business management assistance;
2. Organization of trade fairs for commercial or advertising purposes;
3. Commercial administration of the licensing of the goods and services of others;
4. Outsourcing services in the nature of business assistance;
5. Providing business information via a website;
6. Import-export agency services;
7. Marketing services;
8. Provision of an on-line marketplace for buyers and sellers of goods and services;
9. Sales promotion for others;
10. Personnel management;
11. Relocation services for businesses;
12. Systemization of information into computer databases;
13. Accounting services;
14. Rental of vending machines;
15. Sponsorship search;
16. Rental of sales stands;
17. Rental of office machinery and equipment;
18. Personnel placement and recruitment;
19. On-line advertising on a computer network

 

International Class 037:

 

1. Providing home repair information;
2. Fire alarm installation and repair;
3. Burglar alarm installation and repair;
4. Photographic apparatus repair;
5. Film projector repair and maintenance;
6. Electric appliance installation and repair; 
7. Office machines and equipment installation, maintenance and repair;
8. Machinery installation, maintenance and repair;
9. Installation, maintenance and repair of computer hardware;
10. Rebuilding machines that have been worn or partially destroyed;
11. Installation and repair of air-conditioning apparatus;
12. Repair or maintenance of fire alarms;
13. Building maintenance and repair;
14. Repair and maintenance of electric vehicles;
15. Rustproofing;
16. Advisory services relating to the installation of audiovisual equipment;
17. Installation, repair and maintenance of computers and computer peripherals;
18. Installation and repair of computer hardware

 

International Class 038:

 

1. Radio broadcasting;
2. Message sending, receiving and forwarding;
3. Videoconferencing services;
4. Providing an on-line forum in the field of economy and education;
5. Providing access to databases;
6. Computer aided transmission of messages and images;
7. Providing user access to global computer networks;
8. Radio communications;
9. Teleconferencing services;
10. Streaming of data;
11. Video-on-demand transmission

 

International Class 042:

 

1. Surveying;
2. engineering services, particularly technical project planning and design engineering of lines for the processing of web products;
3. Quality control for others;
4. Maintenance of computer software;
5. Design and development of electronic data security systems;
6. Consultancy in the design and development of computer hardware;
7. Computer technology consultancy;
8. Monitoring of computer systems by remote access to ensure proper functioning;
9. Cloud computing featuring software for use in database management;
10. Data migration services;
11. Installation, repair and maintenance of computer software;
12. Data security consultancy;
13. Testing of computer software;
14. Software design and development;
15. Consultancy services in the field of computer software technological development;
16. Development of construction projects, namely, research in the field of building construction;
17. Research and development of new products for others;
18. Software as a service (SAAS) services featuring software for database management, spreadsheet and word processing;
19. Maintenance and upgrading of computer software

 

International Class 045:

 

1. Monitoring of burglar and security alarms;
2. Physical security consultancy;
3. Guard services;
4. Monitoring of security alarm systems;
5. Security guarding for facilities;
6. On-line social networking services;
7. Rental of fire alarms;
8. Licensing of computer software;
9. Opening of security locks;
10. Fire-fighting;
11. Night guard services;
12. Licensing of intellectual property being legal services

 

 

If Applicant is unable to provide specimens to support use of these items, Applicant must delete these entries.

 

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 prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of 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.

 

Failure to comply with a requirement to furnish additional specimens is grounds for refusing registration.  In re Harley, 119 U.S.P.Q.2d 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 specimens of record.  See In re Planalytics, Inc., 70 U.S.P.Q.2d 1453, 1457-58 (TTAB 2004).

 

 

ASSISTANCE

 

Please 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 and/or requirements 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.    

 

 

/J. Ian Dible/

J. Ian Dible

Examining Attorney

Law Office 111

(571) 272-0209

ian.dible@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.