To: | JVC KENWOOD CORPORATION (tmefs@LSLLP.com) |
Subject: | U.S. Trademark Application Serial No. 88173442 - PIVOT MOTION FIT - 21224 |
Sent: | August 28, 2019 06:30:30 PM |
Sent As: | ecom101@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88173442
Mark: PIVOT MOTION FIT
|
|
Correspondence Address: |
|
Applicant: JVC KENWOOD CORPORATION
|
|
Reference/Docket No. 21224
Correspondence Email Address: |
|
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 28, 2019
This Office action is in response to applicant’s communication filed on August 7, 2019. Applicant has provided arguments against the Section 2(e)(1) refusal. The response has been carefully considered, but the refusal is maintained and continued. Applicant must address the following issue.
SECTION 2(f) ACQUIRED DISTINCTIVENESS - INSUFFICIENT
Applicant’s Trademark Act Section 2(f) claim based on five years’ use is insufficient to show acquired distinctiveness because applicant’s dates of use of the mark indicate that applicant has not actually used the mark in commerce for the requisite time period. See 15 U.S.C. §1052(f). For this claim to be accepted, applicant’s substantially exclusive and continuous use of the mark in commerce that the U.S. Congress may lawfully regulate must have been for at least five years before the date on which the claim is made. 15 U.S.C. §1052(f); 37 C.F.R. §2.41(a)(2); TMEP §1212.05. And such use must have been in a type of commerce that may be regulated by the U.S. Congress. See 15 U.S.C. §§1052(f), 1127.
In the present case, applicant asserted a claim of acquired distinctiveness on August 7, 2019. Five years prior to this date would be approximately August 7, 2014. However, the date of first use in commerce specified in the application is September 30, 2014, which is less than five years prior to the date the distinctiveness claim was made.
As an alternative to claiming acquired distinctiveness under Section 2(f), applicant may request to amend the application to seek registration on the Supplemental Register. See 15 U.S.C. §1091(a); 37 C.F.R. §§2.47, 2.75(a); TMEP §§801.02(b), 816. To amend to the Supplemental Register, the mark must be in lawful use in commerce; however, no specific length of use is required. See 15 U.S.C. §1091(a); 37 C.F.R. §2.47(a); TMEP §815.02.
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
/George M. Lorenzo/
Examining Attorney
Law Office 101
United States Patent and Trademark Office
(571-272-9367
george.lorenzo@uspto.gov
RESPONSE GUIDANCE