To: | OCLC, Inc. (trademark@squirepb.com) |
Subject: | U.S. Trademark Application Serial No. 88148002 - 024604.414 |
Sent: | August 19, 2019 10:56:14 AM |
Sent As: | ecom125@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88148002
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Correspondence Address: 275 BATTERY STREET, SUITE 2600
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Applicant: OCLC, Inc.
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Reference/Docket No. 024604.414
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: August 19, 2019
REFUSAL-PREMATURE USE
Specifically, the specimen indicates that applicant’s software is currently being tested by a single entity and “will be available for US public libraries later this year”.
The use or display of a mark in the sale or advertising of goods and services before the goods are actually created or provided or the services rendered does not show use in commerce. See Couture v. Playdom, Inc., 778 F.3d 1379, 1380-82, 113 USPQ2d 2042, 2043-44 (Fed. Cir. 2015); In re Cedar Point, Inc., 220 USPQ 533 (TTAB 1983); TMEP §§904, 1301.03(a).
If applicant’s goods were being sold or transported or the services were being rendered in commerce before expiration of the deadline for filing a statement of use, applicant must submit the following:
(1) A substitute specimen showing the applied-for mark in use in commerce for the goods and/or services specified in the statement of use.
(2) The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “The substitute specimen was in use in commerce before the expiration of the deadline for filing the statement of use.” 37 C.F.R. §2.59(b)(2); TMEP §904.05; see 37 C.F.R. §2.193(e)(1). If submitting a substitute specimen requires an amendment to the dates of use, applicant must also verify the amended dates. 37 C.F.R. §2.71(c); TMEP §904.05.
If applicant did not use the applied-for mark in commerce within the time permitted for filing a statement of use, the application will be abandoned. See 37 C.F.R. §2.88(k); TMEP §1109.16(a).
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
/Nicole Passman/
Nicole Passman
Examining Attorney
Law Office 125
(571) 272-3244
nicole.passman@uspto.gov
RESPONSE GUIDANCE