To: | Zhejiang Dahua Technology Co., Ltd. (tonyhom1@outlook.com) |
Subject: | U.S. Trademark Application Serial No. 88122670 - DAHUA - N/A |
Sent: | November 01, 2020 04:16:23 PM |
Sent As: | ecom111@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88122670
Mark: DAHUA
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Correspondence Address: |
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Applicant: Zhejiang Dahua Technology Co., Ltd.
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Reference/Docket No. N/A
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.
This Office action is in response to applicant’s communication filed on September 21, 2020.
In a previous Office action dated March 22, 2020, the trademark examining attorney refused registration of the applied-for mark based on the following: Trademark Act Sections 1 and 45 for a failure to show the applied-for mark in use in commerce with any of the specified goods and services. In addition, applicant was required to satisfy the following requirements: provide information about the specimen, and provide additional specimen submissions.
Based on applicant’s response, the trademark examining attorney maintains and now makes FINAL the refusal and requirements 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:
SECTIONS 1 AND 45 REFUSAL – MARK NOT USED IN COMMERCE
Thus, the refusal to register the applied-for mark in International Classes 007, 009, 012, 035, 037, 038, 042, and 045 is now made final because applicant failed to provide evidence of use of the mark 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), 2.63(b); TMEP §§904, 904.07, 1301.04(g)(i). In addition, the requirement for information/documentation about the original specimen and any substitute specimen is made final. 37 C.F.R. §2.61(b).
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). “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.
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). Similarly, an electronic display or webpage that has been digitally created or altered to include the mark or a mockup of how the mark may be displayed on the electronic display or webpage 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).
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, and applicant did not provide specimens showing the mark used in connection with all identified goods. For example, the Class 007 specimen is described as showing “Auxiliary power units for supplying electrical power,” but the provided webpage shows a mounting bracket, mounting adapters, and a surveillance junction box – and not the identified power unit. For the Class 009 specimen, applicant provided an Amazon product page showing a webcam, but did not provide any of the requested information to demonstrate use in commerce, such as sales documentation. For the Class 012 specimen, applicant provided screenshots of its website showing a camera and junction boxes, but neither of these goods are identified in Class 012.
Additionally, the specimen shows screenshots purportedly displaying the mark in connection with the identified services. However, the specimen submissions fail to show any direct association with the identified services. For example, the Class 035 specimen is described as showing “On-line advertising on a computer network,” but the specimen fails to refer to any advertising services. For the Class 037 and 038 specimen, applicant provided a user’s manual for what appears to be video surveillance management software named “DSS Express,” with the specimen described as showing “Electric appliance installation and repair” in Class 037 and “Providing user access to global computer networks” in Class 038, but the user’s manual does not display the mark in connection with any reference to services relating to installation or repair of electric appliances or providing access to computer networks. For the Class 042 specimen, applicant provided screenshots of a webpage displaying various downloadable software applications, but none of the nondownloadable software as described by the identified “SAAS” services. For the Class 045 specimen, applicant provided screenshots of its website showing a camera and junction boxes, with no reference to the described “On-line social networking services.”
Therefore, the specimen does not show actual use of the mark in commerce.
Response option. Applicant may respond to the specimen 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 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.
If applicant submits an acceptable verified substitute specimen, the requirement below for additional information/documentation about the original specimen(s) will be withdrawn. The requirement below as to the original specimen will be made final if applicant submits a substitute specimen that is not acceptable and does not also respond completely to the requirement below.
Applicant may not withdraw the statement of use. See 37 C.F.R. §2.88(f); TMEP §1109.17.
Answer for each specimen/photograph/image previously provided. For any website source, 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 applicant used 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) 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), provide documentation that shows payment or other consideration made for the goods and services, redacting personal or private information of buyers as necessary.
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).
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:
International Class 009:
International Class 012:
International Class 035:
International Class 037:
International Class 038:
International Class 042:
International Class 045:
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
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).
/J. Ian Dible/
J. Ian Dible
Examining Attorney
Law Office 111
(571) 272-0209
ian.dible@uspto.gov
RESPONSE GUIDANCE