To: | CURIEVISION, INC. (trademarks@hansantos.com) |
Subject: | U.S. Trademark Application Serial No. 88123803 - C - CUR.TM0004US |
Sent: | June 07, 2021 12:25:16 PM |
Sent As: | ecom116@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88123803
Mark: C
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Correspondence Address:
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Applicant: CURIEVISION, INC.
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Reference/Docket No. CUR.TM0004US
Correspondence Email Address: |
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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: June 07, 2021
This Office action is in response to applicant’s communication filed on March 4, 2021.
In a previous Office action(s) dated November 19, 2020, the trademark examining attorney refused registration of the applied-for mark based on the following: Sections 1 and 45 refusal based on the specimen not showing the mark in the drawing in use in commerce in International Class 42, which is required in the statement of use.
Applicant has now responded by providing substitute specimens described as “Applicant’s website.” However, upon review of those substitute specimens, the examiner notes the following NEW refusal.
SUMMARY OF ISSUES that applicant must address:
REFUSAL: SPECIMEN DOES NOT SHOW USE OF MARK FOR SERVICES IN APPLICATION
Registration is refused because the specimen does not show the applied-for mark in use in commerce in connection with any of the services specified in International Class 42 in the statement of 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 Chengdu AOBI Info. Tech. Co., 111 USPQ2d 2080, 2081-82 (TTAB 2011); TMEP §§904, 904.07(a), 1301.04(d), (g)(i). Specifically, the specimens show use of the proposed mark for a downloadable software application, which is a good classified in International Class 9 and not services in International Class 42. Therefore, it is the incorrect type of specimen for these services. See attached pages from a third party app store showing that the software is “free to install” and inviting consumers to “see the app in action.” Clearly, the software is advertised as being downloadable, not non-downloadable.
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 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); see In re Gulf Coast Nutritionals, Inc., 106 USPQ2d 1243, 1247 (TTAB 2013).
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).
Examples of specimens for SERVICES include advertising and marketing materials, brochures, photographs of business signage and billboards, and webpages that show the mark used in the actual sale, rendering, or advertising of the services. See TMEP §1301.04(a), (h)(iv)(C).
Applicant may respond to this 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/or services identified in the statement of use.
Applicant, however, may not withdraw the statement of use. See 37 C.F.R. §2.88(g); TMEP §1109.17.
For more information about this refusal and instructions on how to submit a verified “substitute” specimen online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/specimen.jsp.
Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.
Please call or 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(s) and/or requirement(s) 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.
/Marcie R. Frum Milone/
Trademark Examining Attorney
Law Office 116
571-272-9726
Marcie.Milone@uspto.gov
(email for informal communications only)
RESPONSE GUIDANCE