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:  September 27, 2019

 

 

The statement of use has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

SUMMARY OF ISSUES:

• Specimen Unacceptable

 

 

SPECIMEN UNACCEPTABLE

 

No Direct Association

 

Registration is refused because the specimen does not show use in commerce of the applied-for mark with the identified services in International Class 35.  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(f)(ii), (g)(i).  Specifically, the specimen fails to show the mark used in a way that would create in the minds of potential consumers a sufficient nexus or direct association between the mark and the services being offered.  In re Universal Oil Prods. Co., 476 F.2d 653, 655, 177 USPQ 456, 457 (C.C.P.A. 1973); TMEP §1301.04(f)(ii); see also In re JobDiva, Inc., 843 F.3d 936, 942, 121 USPQ2d 1122, 1126 (Fed. Cir. 2016); In re Adver. & Mktg. Dev., Inc., 821 F.2d 614, 620, 2 USPQ2d 2010, 2014 (Fed. Cir. 1987). 

 

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). 

 

When determining whether a mark is used in connection with the services in the application, a key consideration is the perception of the user.  In re JobDiva, Inc., 843 F.3d at 942, 121 USPQ2d at 1126 (citing Lens.com, Inc. v. 1-800 Contacts, Inc., 686 F.3d 1376, 1381-82, 103 USPQ2d 1672, 1676 (Fed Cir. 2012)).  A specimen must show the mark used in a way that would create in the minds of potential consumers a sufficient nexus or direct association between the mark and the services being offered.  In re Universal Oil Prods. Co., 476 F.2d at 655, 177 USPQ2d at 457; TMEP §1301.04(f)(ii); see also In re JobDiva, Inc., 843 F.3d at 942, 121 USPQ2d at 1126; In re Adver. & Mktg. Dev., Inc., 821 F.2d at 620, 2 USPQ2d at 2014. 

 

To show a direct association, specimens showing the mark used in rendering the identified services need not explicitly refer to those services, but “there must be something which creates in the mind of the purchaser an association between the mark and the service activity.”  In re WAY Media, Inc., 118 USPQ2d 1697, 1698 (TTAB 2016) (quoting In re Johnson Controls, Inc., 33 USPQ2d 1318, 1320 (TTAB 1994)).

 

In the present case, the specimen does not show a direct association between the mark and services in that the specimen merely shows portions of the mark printed on the sides of shipping boxes. The shipping boxes do not appear to reference or suggest the identified “catalog ordering services.” Moreover, to the extent said boxes are associated with the services, they would only be seen by the consumer well after the goods relevant to the catalog ordering services. Accordingly, they do not show a direct association with the identified services.

 

Mutilation

 

Additionally, registration is refused because the specimen does not show the mark in the drawing in use in commerce in International Class 35, 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 only a portion of the mark in the drawing, with edges of the inner circle and the shaded circle removed.  However, the drawing displays the mark with a completed circle apart from, and inside a shaded circle behind.  The mark on the specimen and in the drawing do not match because the mark on the drawing is only a portion of the mark appearing on the specimen.

 

A portion of a mark may be registered only “if that portion presents a separate and distinct commercial impression.”  In re Lorillard Licensing Co., 99 USPQ2d 1312, 1316 (TTAB 2011) (citing In re 1175854 Ontario Ltd., 81 USPQ2d 1446, 1448 (TTAB 2006)).  In this case, the drawing shows only a nonseparable part of the mark appearing on the specimen.  See In re Chem. Dynamics Inc., 839 F.2d 1569, 1571, 5 USPQ2d 1828, 1829-30 (Fed. Cir. 1988); In re Guitar Straps Online LLC, 103 USPQ2d 1745, 1751 (TTAB 2012); TMEP §807.12(a), (d).  Specifically, the removed portions of the lined circle shape itself, and the shaded circle in which a considerable portion of the mark appears. 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, 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 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 a statement of use.”  The substitute specimen cannot be accepted without this statement.

 

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

 

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, amending the mark to match any of the marks on the specimen would alter and remove design elements such that the overall commercial impression would be changed.

 

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

 

 

RESPONSE GUIDELINES

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

 

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  

 

 

/Jim Hill/

James Hill

Examining Attorney

Law Office 115, USPTO

(571) 270-5682

james.hill@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.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on September 27, 2019 for

U.S. Trademark Application Serial No. 88132703

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Jim Hill/

James Hill

Examining Attorney

Law Office 115, USPTO

(571) 270-5682

james.hill@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from September 27, 2019, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond.

 

 

 

GENERAL GUIDANCE

·         Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·         Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·         Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”