To: | Milliken & Company (ip@nelsonmullins.com) |
Subject: | U.S. Trademark Application Serial No. 88142289 - SYNERGY - 003724/09074 |
Sent: | February 19, 2020 04:05:39 PM |
Sent As: | ecom126@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88142289
Mark: SYNERGY
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Correspondence Address: |
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Applicant: Milliken & Company
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Reference/Docket No. 003724/09074
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: February 19, 2020
The statement of use has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the specimen refusal below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SPECIMEN REFUSAL – REQUIRED
Specimen does not show use of the mark in commerce. Registration is refused because the specimen does not show the applied-for mark as actually used in commerce in International Class 9. 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). 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 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).
Specifically, the applicant has applied for “fabrics sold as a component of flame-resistant protective clothing”. When the applied for goods consist of a component of a finished product, the examining attorney should examine the specimen to determine whether it shows use of the mark to identify the separate component or ingredient or the finished product in its entirety. See TMEP §1402.05(a). The submitted specimen shows a piece of clothing that is available to purchase. The product is listed as “Flying Cross Synergy NOMEX IIIA Station Shirt”. Then, in the description for this product, the description states “Synergy NOMEX IIIA (Station Shirts) – These professional, long-wearing shirts consist of 95% Aramid Fibers and 5% Kevlar making the fabric protective, yet comfortable and stain resistant.” The issue with this specimen is the applied for mark appears to be used in connection with other marks that all refer to the name of the entire product, rather than merely referring to the fabric that makes up the shirt. As an example, if the description mentioned that the shirt was “made with Synergy fibers and Kevlar”, that would show the use of the mark to refer to the fabric rather than the entire product. However, in this case, it appears that the mark is used to refer to the entire final product, rather than a component of it. Thus, the specimen fails to show use of the mark in Class 9.
Examples of specimens. Specimens for goods include a photograph of (1) the actual goods bearing the mark; (2) an actual container, packaging, tag or label for the goods bearing the mark; or (3) a point-of-sale display showing the mark directly associated with the goods. See 37 C.F.R. §2.56(b)(1), (c); TMEP §904.03(a)-(m). A webpage specimen submitted as a display associated with the goods must show the mark in association with a picture or textual description of the goods and include information necessary for ordering the goods. TMEP §904.03(i); see 37 C.F.R. §2.56(b)(1), (c). Any webpage printout or screenshot submitted as a specimen must include the webpage’s URL and the date it was accessed or printed. 37 C.F.R. §2.56(c).
Response option. 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 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.
Applicant may not withdraw the statement of use. See 37 C.F.R. §2.88(f); TMEP §1109.17.
For an overview of this response option and instructions on how to submit a different specimen using the online Trademark Electronic Application System (TEAS) form, see the Specimen webpage.
RESPONSE GUIDELINES
Response guidelines. For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
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.
/Kyle Aurand/
Kyle Aurand
Trademark Examining Attorney
Law Office 126
(571) 270-3039
kyle.aurand@uspto.gov
RESPONSE GUIDANCE