To: | Subaru of America, Inc. (docketing@finnegan.com) |
Subject: | U.S. Trademark Application Serial No. 88174641 - STARDRIVE - 4145.0515 |
Sent: | August 26, 2019 01:56:23 PM |
Sent As: | ecom111@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88174641
Mark: STARDRIVE
|
|
Correspondence Address: MARK SOMMERS AND CHRISTIE BATY HUDGINS Finnegan, Henderson, Farabow, Garrett &
|
|
Applicant: Subaru of America, Inc.
|
|
Reference/Docket No. 4145.0515
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 26, 2019
The amendment to allege use and response to Office action been reviewed by the assigned trademark examining attorney. Although the amendment to allege use satisfies the minimum filing requirements under 37 C.F.R. §2.76(c), the amendment to allege use does not satisfy all the statutory requirements, as specified below. See TMEP §1104.10(a). This Office action supersedes the preceding Office action dated February 8, 2019 and incorporates all outstanding refusals and/or requirements. See id. Please note that applicant’s arguments with respect to the likelihood of confusion refusal will not be addressed unless and until a Final action is issued in this case.
Applicant must respond to all issues raised in both this and the preceding Office action within six months from the date of this Office action to avoid abandonment of the application. See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §1104.10(a).
Acceptable print display specimens are point-of-sale materials such as banners, shelf-talkers (a printed card or sign affixed to a store shelf to call a buyer’s attention to a particular product displayed on that shelf), and window displays, which are designed to catch the attention of purchasers and prospective purchasers as an inducement to make a sale. TMEP §904.03(g); see In re U.S. Tsubaki, Inc., 109 USPQ2d 2002, 2003 (TTAB 2014) (citing In re Shipley Co., 230 USPQ 691, 694 (TTAB 1986)). Brochures and other advertising material may be acceptable specimens as print displays only if sufficient evidence, such as a photograph of a trade show booth, is provided showing how such specimens are used in an actual display featuring the goods and the print advertising material together. See In re Ancha Elecs., Inc., 1 USPQ2d at 1319-20; TMEP §904.03(g). Otherwise, such materials are generally considered mere advertising and are not acceptable as specimens for showing use in commerce for goods, as in the present case. See In re Kohr Bros., 121 USPQ2d 1793, 1794 (TTAB 2017) (quoting In re Quantum Foods, Inc., 94 USPQ2d 1375, 1379 (TTAB 2010)); TMEP §904.04(b).
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 or amendment to allege 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).
Examples of specimens for goods include tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, and displays such as banners or shelf talkers 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 evidence that the specimen was used with the goods at their point-of-sale, such as (a) a photograph of the specimen used with the goods as a display associated with the goods; or (b) a verified statement explaining how the specimen is actually used at the point of sale and specifying how applicant’s mark is associated with the goods.
(2) 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 or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the goods identified in the application or amendment to allege 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 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.
(3) Amend the filing basis to intent to use under Section 1(b), for which no specimen is required. This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.
For an overview of all the response options referenced above and instructions on how to satisfy these options online using the Trademark Electronic Application System (TEAS) form, please go to the Specimen webpage.
CLOSING
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
/IngridCEulin/
Ingrid C. Eulin
Examining Attorney
Law Office 111
571-272-9380
Ingrid.Eulin@uspto.gov
RESPONSE GUIDANCE