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:  December 21, 2020

 

This letter is in response to the correspondence filed by the applicant on December 1, 2020 in which the applicant submits a Statement and Specimen of Use for the goods listed in International Class 005 & and services listed in International Class 042. Upon review of the facts currently of record, the examiner finds the specimen of use documentation of record acceptable to show use of the mark for the Class 055 goods and unacceptable to show use of the mark for the Class 042 services for the following reasons:

 

REFUSAL to Register Under Trademark Act Sections 1, 2, 3 & 45–Activity Listed in International Class 042 Do Not Constitute “Services”

 

Registration is refused because the activities recited in the identification of services, when viewed in conjunction with the specimen, are not registrable services as contemplated by the Trademark Act.  Trademark Act Sections 1, 2, 3, and 45, 15 U.S.C. §§1051-1053, 1127; see TMEP §§904.07(b), 1301.01 et seq.

 

The activities set forth as services in an application are reviewed using the following criteria to determine whether they constitute registrable services:

 

(1)       A service is a real activity, not an idea, concept, process, or system.

 

(2)       A service is performed primarily for the benefit of someone other than the applicant.

 

(3)       A service is an activity that is sufficiently separate and qualitatively different from an applicant’s principal activity, i.e., it cannot be an activity that is merely incidental or necessary to an applicant’s larger business.

 

TMEP §1301.01(a); see In re Dr Pepper Co., 836 F.2d 508, 509-510, 5 USPQ2d 1207, 1208-1209 (Fed. Cir. 1987); In re Canadian Pac. Ltd., 754 F.2d 992, 994-95, 224 USPQ 971, 973 (Fed. Cir. 1985).

 

In this case, the description set forth in the identification of services is as follows:  “Development of pharmaceutical preparations and medicine.”  The specimen indicates that these activities are not registrable services because the only development activity undertaken by the applicant is for the development of its own pharmaceutical preparations and medicines. While pharmaceutical product development is a real activity, the specimen of use documentation makes it clear that the primary beneficiary of the activity is the applicant. The applicant’s pharmaceutical product development activity is not sufficiently separate from applicant’s principal activity of producing a line of pharmaceutical goods. The specimen documentation makes it clear that any pharmaceutical product development activity is incidental to and wholly done in support of the applicant’s own pharmaceutical product lines. The applicant should note the following additional grounds for refusal.

 

 

REFUSAL to Register Under Trademark Act Section 1(a) for Services Listed in International Class 042

 

Specimen does not show direct association between mark and services.  Registration is refused because the specimen does not show a direct association between the mark and the services and fails to show the applied-for mark as actually used in commerce with the identified services in International Class 042.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a), (b)(2); TMEP §§904, 904.07(a), 1301.04(f)(ii), (g)(i).  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 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 936, 942, 121 USPQ2d 1122, 1126 (Fed. Cir. 2016) (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.  See 37 C.F.R. §2.56(b)(2); In re Universal Oil Prods. Co., 476 F.2d 653, 655, 177 USPQ2d 456, 457 (C.C.P.A. 1973); TMEP §1301.04(f)(ii). 

 

To show a direct association, specimens consisting of advertising or promotional materials must (1) explicitly reference the services and (2) show the mark used to identify the services and their source.  In re The Cardio Grp., LLC, 2019 USPQ2d 227232, at *2 (TTAB 2019) (quoting In re WAY Media, LLC, 118 USPQ2d 1697, 1698 (TTAB 2016)); TMEP §1301.04(f)(ii).  Although the exact nature of the services does not need to be specified in the specimen, there must be something that creates in the mind of the purchaser an association between the mark and the services.  In re Adair, 45 USPQ2d 1211, 1215 (TTAB 1997) (quoting In re Johnson Controls Inc., 33 USPQ2d 1318, 1320 (TTAB 1994)). 

 

In the present case, the services listed in the record for International Class 042 are: “Development of pharmaceutical preparations and medicine”. The specimen of use documentation of record consist of a screenshot of the “Product Portfolio” page showing a listing of the applicant’s “expansive product portfolio consisting of orals, cleansers, topicals and shampoos”. While this page may be considered informational advertising about the applicant’s products, there is no description of any type of pharmaceutical development services anywhere on the specimen page.

 

Accordingly, the specimen of use does not show a direct association between the mark and services in that it fails to show the applicant providing any type of product development services for potential consumers of pharmaceutical development services.

 

Examples of specimens for services must show a direct association between the mark and the services and include:  (1) copies of advertising and marketing material, (2) a photograph of business signage or billboards, or (3) materials showing the mark in the sale, rendering, or advertising of the services.  See 37 C.F.R. §2.56(b)(2), (c); TMEP §1301.04(a), (h)(iv)(C).  Any webpage printout or screenshot submitted as a specimen must include the webpage’s URL and the date it was accessed or printed on the specimen itself, within the TEAS form that submits the specimen, or in a verified statement under 37 C.F.R. §2.20 or 28 U.S.C. §1746 in a later-filed response.  See 37 C.F.R. §2.56(c); TMEP §§904.03(i), 1301.04(a).

 

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 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 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.

 

 

ADVISORY –Partial Abandonment Without Timely Response Filing

 

This application will become partially abandoned in the event that the applicant fails to file a timely response to this Office action that addresses the issues raised herein.  See 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a). To avoid partial abandonment, a response is due within six months from the date on which the USPTO sent this Office action.  See TMEP §711. 

 

This Office action includes refusal(s) and/or requirement(s) that applied to only a portion of the application; therefore, in the event of applicant’s failure to respond as required, only that portion of the application will be abandoned.  See 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a)(1); TMEP §718.02(a). The portion of the identification that is the subject of the refusal(s) and/or requirement(s) will be deleted from the record for this application at that time. 

 

The application will then proceed with the identification language of record for International Class 005 only.

 

 

How to respond:  Click to file a response to this nonfinal Office action.    

 

 

/Amy Kean/

Trademark Attorney, Law Office 112

Phone: 571-272-8854

Amy.Kean@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 December 21, 2020 for

U.S. Trademark Application Serial No. 88156921

 

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. 

 

 

/Amy Kean/

Trademark Attorney, Law Office 112

Phone: 571-272-8854

Amy.Kean@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 December 21, 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.”