Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

NON-FINAL OFFICE ACTION

 

THE USPTO MUST RECEIVE APPLICANT’S RESPONSE TO THIS LETTER WITHIN SIX (6) 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:  March 06, 2020

 

The statement of use has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the three (3) issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

SECTIONS 1 & 45 REFUSAL – PRINTER’S PROOF NOT ACCEPTABLE TO SHOW USE

 

Registration is refused because the specimen appears to be a printer’s proof and does not show the applied-for mark as actually used 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), (c); TMEP §§904.04(a), 904.07(a), 1301.04(a), (g)(i). 

 

Specifically, the specimen shows two gray lines at each of the corners of the label, which are generally used to indicate where the edges of a label will appear when it is printed. Thus, the specimen does not appear to consist of a picture of an actual label but is instead of printer’s proof that is a preliminary copy of the label used to make corrections before publication and is not disseminated to the public. A printer’s proof is not a proper specimen for goods because it does not show the mark as actually used in commerce. 37 C.F.R. §2.56(c); see 15 U.S.C. §1127; In re The Signal Cos., 228 USPQ 956, 957-58 n.4 (TTAB 1986).

 

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 goods 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). Because applicant has not provided such a specimen, registration is refused under Trademark Act Sections 1 and 45.

 

Applicant may respond to this refusal by submitting 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 goods identified in the statement of use. 

 

Specimens for goods include a photograph of (1) the actual goods bearing the mark; (2) an actual container, packaging, tag or label for the goods bearing the mark; or (3) a point-of-sale display showing the mark directly associated with the goods.  See 37 C.F.R. §2.56(b)(1), (c); TMEP §904.03(a)-(m). A webpage specimen submitted as a display associated with the goods must show the mark in association with a picture or textual description of the goods and include information necessary for ordering the goods. TMEP §904.03(i); see 37 C.F.R. §2.56(b)(1), (c). Any webpage printout or screenshot submitted as a specimen must include the webpage’s URL and the date it was accessed or printed. 37 C.F.R. §2.56(c).

 

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 verified statement.

 

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.  

 

Applicant, however, may not withdraw the statement of use. See 37 C.F.R. §2.88(f); TMEP §1109.17.

 

TRANSLATION OF SPECIMEN REQUIRED

 

To permit proper examination, applicant must provide an English translation of all the non-English wording on the specimen. TMEP §904.06; see 37 C.F.R. §2.61(b). If applicant submits an actual picture of the current label in response to the Sections 1 and 45 refusal above, then this translation is required because, without the translation, it is not known what goods this label refers.

 

APPLICANT’S EMAIL ADDRESS REQUIRED

 

A separate email address for the applicant is required so that the USPTO can contact applicant if the designated attorney’s representation ends. See 37 C.F.R. §2.32(a)(2). The email address for applicant cannot be identical to the listed primary correspondence email address of applicant’s attorney.

 

ADVISORY: IMPROPER USE OF FEDERAL TRADEMARK SYMBOL

 

The specimen shows use of the federal registration symbol ® with the applied-for mark.  However, the USPTO records do not show that the mark is registered. Applicant may not use the federal registration symbol until its mark is registered in the USPTO. TMEP §§906, 906.03. After registration, applicant may use this symbol in connection with the specific goods listed in the registration.  Id.

 

This information is advisory only.  Applicant need not respond to this issue.

 

RESPONSE REQUIRED

 

For this application to proceed, applicant must:

 

(1)   Respond to the Sections 1 and 45 refusal by submitting a verified “substitute” specimen of the actual label for the goods (and not a digital reproduction such as a printer’s proof);

 

(2)   Submit an English translation of the specimen (if the substitute specimen is entirely in foreign wording or in non-English characters); and

 

(3)   Provide applicant’s email address.

 

Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

Click to file a response to this non-final Office action  

 

 

/Andrew Leaser/

Trademark Examining Attorney

Law Office 117

(571) 272-1911

andrew.leaser@uspto.gov

 

 

RESPONSE GUIDANCE

 

Missing the response deadline to this letter will cause the application to abandon. A response must be received by the USPTO before midnight Eastern Time of the last day of the response period. TEAS maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

Informal communications will not be accepted as responses to Office actions and will not be considered; therefore, do not respond to this Office action by telephone or e-mail. All informal communications relevant to this application will be placed in the official application record.

 

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.

 

USPTO changed federal trademark rules to rename TEAS Reduced Fee (RF) application to “TEAS Standard” and to eliminate TEAS Regular application form. Current TEAS RF applicants will generally need to continue to meet similar application requirements. See Changes to the Trademark Rules of Practice to Mandate Electronic Filing Final Rule and Correction, 84 Fed. Reg. 37,081, 68,045, 69,330 (published July 31, 2019, effective Feb. 15, 2020) (codified at 37 C.F.R. pts. 2 & 7). In addition, current TEAS Regular applicants must now provide an email address when submitting documents through TEAS and will generally be sent correspondence electronically from the USPTO. For more information about these changes, see the Mandatory Electronic Filing webpage. 

 

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 March 06, 2020 for

U.S. Trademark Application Serial No. 88199742

 

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. 

 

 

/Andrew Leaser/

Trademark Examining Attorney

Law Office 117

(571) 272-1911

andrew.leaser@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 March 06, 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.”