Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

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. 

 

 

Issue date:  June 09, 2020

 

 

STATUS OF APPLICATION

 

Pursuant to TMEP §§705.01 and 713.02, applicant is advised of the following status of the application.  Prior to issuance of this Final Office action, the following issues were outstanding with this application:

 

(1)   Specimen Does Not Show Use in Commerce with Goods Identified in Class 28 – Substitute Specimen Required

 

In light of applicant’s June 1, 2020 Office action response, the examining attorney has determined the following:

 

(1)   Applicant’s arguments are not persuasive.  Therefore, the substitute specimen requirement is now made FINAL.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

SUMMARY OF ISSUES:

 

• Deficient Catalog Specimen Does Not Show Use in Commerce – Substitute Specimen Required
• Response Guidelines – Partial Abandonment Advisory

 

DEFICIENT CATALOG SPECIMEN DOES NOT SHOW USE IN COMMERCE – SUBSTITUTE SPECIMEN REQUIRED

 

Registration is refused because the specimen in International Class 8 is not acceptable as a display associated with the goods and does not show the applied-for mark as actually used in commerce.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §2.56(a), (b)(1); see TMEP §§904, 904.03(g)-(i), 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).

 

A webpage or catalog display specimen (1) must show use of the mark directly associated with the goods and (2) such use must be of a point-of-sale nature.  37 C.F.R. §2.56(b)(1).  This means that this type of display specimen must include the following:

 

(1)       A picture or sufficient textual description of the goods;

(2)       The mark associated with the goods; and

(3)       A means for ordering the goods such as a “shopping cart” button/link, an order form, or a telephone number for placing orders. 

 

See In re Sones, 590 F.3d 1282, 1286-89, 93 USPQ2d 1118, 1122-24 (Fed. Cir. 2009); In re Azteca Sys., Inc., 102 USPQ2d 1955, 1957-58 (TTAB 2012); In re Dell Inc., 71 USPQ2d 1725, 1727 (TTAB 2004); Lands’ End v. Manbeck, 797 F. Supp. 511, 514, 24 USPQ2d 1314, 1316 (E.D. Va. 1992); TMEP §904.03(h), (i)-.03(i)(D). 

 

In this case, the specimen does not show sufficient means for ordering the goods.  Specifically, there is no information regarding the means to purchase the goods.  Contrary to applicant’s claims, there is no indication that the goods can be purchased through the page, which would make the page a point-of-sale display.  Having to follow links to other pages to possibly purchase the goods proves that the page shown in the specimen is not a point-of-sale display.  The page also does not show the mark on the goods and does not show the mark on packaging for the goods. 

 

Accordingly, such material is mere advertising, which is not acceptable as a specimen for goods.  See In re Siny Corp., 920 F.3d 1331, 1336, 2019 USPQ2d 127099, at *2-3 (Fed. Cir. 2019) (citing Powermatics, Inc. v. Globe Roofing Prods. Co., 341 F.2d 127, 130, 144 USPQ 430, 432 (C.C.P.A. 1965)); see also Avakoff v. S. Pac. Co., 765 F.2d 1097, 1098, 226 USPQ 435, 436 (Fed. Cir. 1985); TMEP §904.04(b), (c). 

 

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).  As specified above, 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 – PARTIAL ABANDONMENT ADVISORY

 

Applicant must respond within six months of the date of issuance of this final Office action or the following class to which the final requirement applies will be deleted from the application by Examiner’s Amendment:  28.  37 C.F.R. §2.65(a); see 15 U.S.C. §1062(b).

 

The application will then proceed for the following class:  41. 

 

Applicant may respond by providing one or both of the following:

 

(1)       a response filed using the Trademark Electronic Application System (TEAS) that fully satisfies all outstanding requirements and/or resolves all outstanding refusals; and/or

 

(2)       an appeal to the Trademark Trial and Appeal Board filed using the Electronic System for Trademark Trials and Appeals (ESTTA) with the required filing fee of $200 per class.

 

37 C.F.R. §2.63(b)(1)-(2); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.

 

In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues.  TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters).  There is a fee required for filing a petition.  37 C.F.R. §2.6(a)(15).

 

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 requirements 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 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).

 

 

/Jacob Vigil/

Trademark Examining Attorney

Law Office 103

571-270-3586

jacob.vigil@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 June 09, 2020 for

U.S. Trademark Application Serial No. 88142400

 

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. 

 

 

/Jacob Vigil/

Trademark Examining Attorney

Law Office 103

571-270-3586

jacob.vigil@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 June 09, 2020, 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.”