To: | Legendary Auto Interiors, Ltd. (jellsworth@legendaryautointeriors.com) |
Subject: | U.S. Trademark Application Serial No. 88128591 - IST NEXT GEN FLOORMATS - N/A |
Sent: | September 19, 2019 08:35:15 AM |
Sent As: | ecom108@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88128591
Mark: IST NEXT GEN FLOORMATS
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Correspondence Address: LEGENDARY AUTO INTERIORS, LTD. LEGENDARY AUTO INTERIORS, LTD.
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Applicant: Legendary Auto Interiors, Ltd.
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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). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: September 19, 2019
This Office action is in response to applicant’s communication filed on September 4, 2019. With the response, applicant provided substitute specimens. The same are not accepted because the mark on the drawing page does not match the mark on these substitute specimens.
MARK ON DRAWING PAGE DOES NOT MATCH MARK ON SUBSTITUTE SPECIMENS
Registration is refused because the specimen does not show the mark in the drawing in use in commerce in International Class 12, which is required 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); TMEP §§904, 904.07(a), 1301.04(g)(i). The mark appearing on the specimen and in the drawing must match; that is, the mark in the drawing “must be a substantially exact representation of the mark” on the specimen. See 37 C.F.R. §2.51(a)-(b); TMEP §807.12(a).
In this case, the specimen displays the mark as 1ST GEN FLEX TREAD. However, the drawing displays the mark as 1ST NEXT GEN FLOORMATS. The mark on the specimen does not match the mark in the drawing because the marks are just not the same marks. Therefore, legally they are not the same marks for the purposes of showing proper use of the mark for which applicant seeks registration. Applicant has thus failed to provide the required evidence of use of the mark in commerce. See TMEP §807.12(a).
Applicant may respond to this refusal by submitting a different specimen (a verified “substitute” specimen) that (a) shows the mark in the drawing in actual use in commerce for the goods and/or services in the statement of use, and (b) was in actual use in commerce prior to the expiration of the deadline for filing the statement of use.
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).
The USPTO will not accept an amended drawing submitted in response to this refusal because the changes would materially alter the drawing of the mark in the original application or as previously acceptably amended. See 37 C.F.R. §2.72(a)-(b); TMEP §807.14. Specifically, the mark on the substitute specimen is not a substantially exact representation of the mark on the drawing page. To amend the mark on the drawing page to the mark on the substitute specimen would be a material alteration because the marks would not create the impression of being essentially the same mark.
In addition, applicant may not respond by withdrawing the statement of use. See 37 C.F.R. §2.88(f); TMEP §1109.17.
For more information about drawings and instructions on how to satisfy this response option online using the Trademark Electronic Application System (TEAS) form, see the Drawing webpage.
CLOSING
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 nonfinal Office action
/William H. Dawe, III/
Examining Attorney
Law Office 108
(571) 272-9337 voice
(571) 273-9337 fax
Bill.Dawe@USPTO.GOV (not for fomal responses)
RESPONSE GUIDANCE