To: | Chroma Tattoo Ink, Inc. (mail@ipcounselors.com) |
Subject: | U.S. Trademark Application Serial No. 88144914 - CHROMA - 4379-500 |
Sent: | August 06, 2019 11:36:25 AM |
Sent As: | ecom121@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88144914
Mark: CHROMA
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Correspondence Address: 60 EAST 42ND STREET, SUITE 2520
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Applicant: Chroma Tattoo Ink, Inc.
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Reference/Docket No. 4379-500
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) 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: August 06, 2019
This Office action is in response to applicant’s communication filed on July 23, 2019.
In a previous Office action dated January 23, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following: Trademark Act Section 1 and 45 for a failure to show the applied-for mark in use in commerce with any of the specified goods. In addition, applicant was required to satisfy the following requirements: amend the identification of goods, satisfy any multiple-class application requirements, provide verification, and clarify the mark description and color claim.
Based on applicant’s response, the trademark examining attorney notes that the following requirements have been satisfied: identification of goods sufficiently amended, verification provided, and mark description and color claim sufficiently clarified. See TMEP §713.02.
The following refusal has also been obviated: Trademark Act Sections 1 and 45 refusal with respect to Class 002. See id.
TRADEMARK ACT SECTIONS 1 AND 45 – SPECIMEN REFUSAL – LIMITED TO CLASS 008
Applicant was previously refused registration in International Class 002 because the specimen consisted of material used by applicant to conduct its internal business. Response options for overcoming that refusal, if any, were set forth in the prior Office action. Applicant responded to such refusal by submitting a substitute specimen that demonstrated proper use of the applied-for mark in commerce for Class 002, but does not show proper use of the applied-for mark in commerce for Class 008 for the reasons immediately stated below. Thus, the refusal to register the applied-for mark in International Class 008 is now made final because applicant failed to provide evidence of use of the mark in commerce. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a), 2.63(b); TMEP §§904, 904.07, 1301.04(g)(i).
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 goods identified in the application. 15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).
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).
Applicant may respond to this refusal by satisfying one of the following for each applicable international class:
(1) Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application and (b) shows the mark in actual use in commerce for the goods identified in the application. 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 at least as early as the filing date of the application or prior to the filing of the amendment to allege use.” The substitute specimen cannot be accepted without this statement.
(2) Amend the filing basis to intent to use under Section 1(b), for which no specimen is required. This option will later necessitate additional fees and filing requirements such as providing a specimen.
For an overview of both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/specimen.jsp.
In such case, the application will proceed for the following class only: Class 002.
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 final Office action and/or appeal it to the Trademark Trial and Appeal Board (TTAB).
/Brandy Mazzella/
Examining Attorney
Law Office 121
(571) 270-3777
brandy.mazzella@uspto.gov
RESPONSE GUIDANCE