UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.  A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.

 

ISSUE/MAILING DATE: 2/27/2019

 

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

 

SEARCH OF OFFICE’S DATABASE OF MARKS

 

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).

 

SUMMARY OF ISSUES:

·        Specimen Refusal

·        Classification and Identification of Services Requirement

·        Request for Information about Certification Mark Statement

 

SPECIMEN

 

Assuming that the applicant intends to apply for a certification mark, registration is refused because the specimen of record does not show the applied-for mark in use in commerce as a certification mark.  15 U.S.C. §§1051-1052, 1054, 1127; see 37 C.F.R. §§2.45(a)(4)(i)(E), 2.56(a), (b)(5); TMEP §§904.07(a), 1306.02(a)(i)(B), 1306.04(c).  A certification mark specimen must show how an authorized party other than the owner uses the mark in commerce to certify “regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics of that person’s goods or services; or that members of a union or other organization performed the work or labor on the goods or services.”  37 C.F.R. §2.56(b)(5); TMEP §1306.02(a)(i)(B).

 

In the present case, the specimen is merely a photocopy of the drawing or a picture or rendering of the applied-for mark, and thus fails to show the applied-for mark in use in commerce as a certification mark. 

 

Applicant may respond to this refusal by submitting a substitute specimen or amending applicant’s basis to intent to use under Section 1(b).

 

Submitting a substitute specimen:  Applicant may submit a substitute specimen that shows an authorized party using the applied-for mark in commerce as a certification mark for the services in the application, and 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 at least as early as the filing date of the application.”  37 C.F.R. §2.59(a); TMEP §904.05.  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.

 

Examples of specimens for services may include brochures, advertisements, website printouts or other matter indicating that the services have been certified.  See id. 

 

To submit a verified substitute specimen online using the Trademark Electronic Application System (TEAS) response form, applicant should (1) answer “Yes” to form wizard question #2; and then, continuing on to the next portion of the form, do the following for each relevant class for which a substitute specimen is being submitted:  (2) under “Classification and Listing of Goods/Services/Collective Membership Organization,” select the following statement, “Check here to modify the current classification number; listing of goods/services; dates of use; and/or filing basis; or to submit a substitute specimen or foreign registration certificate.  If not checked, the changes will be ignored.”; (3) under “Specimen File,” attach a specimen (attachment may not exceed 5 megabytes); (4) describe what the specimen consists of; and (5) select the following statement:  “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” [for an application based on Section 1(a), Use in Commerce] OR “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use” [for an application based on Section 1(b) Intent-to-Use].  Note:  When submitting a verified substitute specimen, the TEAS online response form requires two signatures:  one in the “Declaration Signature” section and one in the “Response Signature” section. 

 

Amending to Section 1(b):  If applicant cannot provide an acceptable substitute specimen, applicant may amend the application basis to intent to use under Section 1(b), for which no specimen is required, and the refusal will be withdrawn.  See TMEP §806.03(c).  However, if applicant amends the basis to Section 1(b), registration will not be granted until applicant later amends the application back to use in commerce by filing an acceptable allegation of use with a proper specimen.  See 15 U.S.C. §1051(c), (d); 37 C.F.R. §§2.76, 2.88; TMEP §1103.  If the same specimen is submitted with an allegation of use, the same refusal will issue.

 

To amend to Section 1(b), applicant must submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “Applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce, and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date.”  37 C.F.R. §2.45(a)(4)(ii)(C), (b)(2); TMEP §1306.02(a)(ii), (b)(i); see 37 C.F.R. §2.35(b)(1).

 

Applicant may amend to Section 1(b) using the TEAS response form as follows:  (1) answer “Yes” to form wizard question #2, and then, after proceeding to the next page in the form, do the following for each relevant class for which the basis is being amended:  (2) under “Classification and Listing of Goods/Services/Collective Membership Organization,” select the following statement:  “Check here to modify the current classification number; listing of goods/services; dates of use; and/or filing basis; or to submit a substitute specimen or foreign registration certificate.  If not checked, the changes will be ignored.”; (3) under “Filing Basis Section 1(a),” uncheck the box for “Filing Basis Section 1(a)”and delete the information appearing in the Date of First Use of Mark Anywhere and Date of First Use of Mark in Commerce textboxes; and (4) check the box for “Filing Basis Section 1(b).”  Note:  When amending to Section 1(b), the TEAS online response form requires two signatures:  one in the “Declaration Signature” section and one in the “Response Signature” section. 

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.  However, if applicant responds to the refusal, applicant must also respond to the requirements set forth below.

 

CLASSIFICATION AND IDENTIFICATION OF SERVICES REQUIREMENT

 

Assuming that the applicant intends to apply for a certification mark, applicant has provided no classification or an inaccurate classification for the services in the application.  A complete application includes the appropriate classification for the identified services.  See 37 C.F.R. §2.45(a)(3).  In applications to register certification marks, all goods are classified in U.S. Class A and all services in U.S. Class B.  37 C.F.R. §§2.45(a)(3), 6.3; TMEP §1306.02(d).  Therefore, applicant must respond by properly classifying the services accordingly. 

 

Applicant may combine U.S. Classes A and B (but no other classes) in one application provided all requirements for a combined application are met.  See 37 C.F.R. §2.86(b), (d); TMEP §1306.02(d).

 

Applicant must identify with greater specificity the services intended to be certified.  See 37 C.F.R. §2.45(a)(2); TMEP §1306.02(c).  The application lists the services as follows:  “Searchable on-line advertising website and guide featuring the goods and services of other vendors via the internet providing advertising service to distribute advertisements for display on internet, namely, in websites social conversations over the internet emails microblogs blogs electronic messages social networks”.  This is not sufficiently specific because the nature of the services are unclear. 

 

Moreover, applicant must correct the punctuation in the identification to clarify the individual items in the list of services.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01(a).  Proper punctuation in identifications is necessary to delineate explicitly each service within a list and to avoid ambiguity.  Commas, semicolons, and apostrophes are the only punctuation that should be used in an identification of services.  TMEP §1402.01(a).  In general, commas should be used in an identification (1) to separate a series of related items identified within a particular category of services, (2) before and after “namely,” and (3) between each item in a list of services following “namely” (e.g., personal care products, namely, body lotion, bar soap, shampoo).  Id.  Semicolons generally should be used to separate a series of distinct categories of services within an international class (e.g., personal care products, namely, body lotion; deodorizers for pets; glass cleaners).  Id.  In this case, applicant must include a semicolon after “via the internet” and before “providing advertising service to distribute advertisements”.

 

Applicant may amend this wording to adopt the following, if accurate (suggested wording in bold):  

 

Class B           Providing Searchable on-line advertising website and guide featuring the goods and services of other vendors via the internet; providing advertising service to distribute advertisements for display on internet, namely, in websites social conversations over the internet emails microblogs blogs electronic messages social networks

 

The identification of services must describe the services of the party who will receive the certification rather than the activities of the certifying organization.  TMEP §1306.02(c).  General kinds of goods and services, such as “produce,” “beef,” “fabric,” “dry cleaning services,” or “dental services,” are usually acceptable.  However, if the certification program itself is limited to specific services, then the identification in the application should be more specific.  Id.  The identification should generally not include the wording “certification,” “certify,” or “certifies.”  Id.

 

The identification of services being certified is different from the certification statement that specifies what aspect of the services is being certified (e.g., that the work performed was done by a union, that the goods come from a particular geographic place, that the goods or services are of a specified quality).  See TMEP §§1306.02(c), 1306.03(a).

 

Applicant may amend the identification to clarify or limit the services, but not to broaden or expand the services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted services may not later be reinserted.  See TMEP §1402.07(e).

 

For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

 

INFORMATION ABOUT CERTIFICATION STATEMENT

 

The record is unclear as to whether applicant is seeking registration of a certification mark or a service mark.  To permit proper examination of the application, applicant must submit additional information about the applied-for mark and specify which type of mark is intended.  See 37 C.F.R. §2.61(b); TMEP §1306.06.  The requested information must make clear how the goods operate, their salient features, and their prospective customers and channels of trade/what the services are and how they are rendered, their salient features, and their prospective customers and channels of trade.  Conclusory statements will not satisfy this requirement for information.

 

In addition, applicant must submit a written statement explaining the activities in which the mark is or will be used, and how the applicant is or will be involved with the mark and services.  See TMEP §1306.06.

 

A trademark or service mark is used by the mark’s owner to indicate the source of his or her services.  See 15 U.S.C. §1127.  A certification mark, however, is used by parties other than the owner and indicates that goods, services, or the providers of those services meet certain standards.  See TMEP §1306.01(a).  For more information on certification marks and the application requirements, see the Certification Mark Applications webpage. 

 

If the applicant inadvertently submitted the certification statement, please complete and return the following form for a service mark with the certification statement deleted.  See 37 C.F.R. §2.32(a)-(d);TMEP §§103, 802.  A new filing fee is not required.

 

Trademark/Service Mark Substitute Application Pursuant to 15 U.S.C. §§1051, 1053 – Principal Register

 

(Fill in Sections 1-6 below.  Sign and date the declaration below.)

 

(1)  U.S. Application Serial Number:

  

(2)  Applicant’s Name:

 

(3)  Applicant’s Mailing Address:

  

(4)  Applicant’s Entity Type:  (Check one and supply requested information.)

 

____    Individual – Citizen of (country):

 

____    Partnership – U.S. state (country, if appropriate) where organized:

 

If U.S. partnership, list all general partners by name, specify their legal entity type and specify their national citizenship or state or country of organization or incorporation:

  

____    Corporation – U.S. state (country, if appropriate) of incorporation:

  

____    Other (specify nature of entity and domicile, e.g., unincorporated association organized under the laws of New York):

 

(5)  GOODS AND/OR SERVICES:  Applicant must list the goods and/or services on or in connection with which the mark is in use or will be in use:

 

(6)  BASIS FOR APPLICATION:  (Check basis or bases which apply, but do not check both the first and second bases (A & B below) for the same goods and/or services; and supply requested information related to each basis.)

 

A  ____  Trademark Act Section 1(a) – Mark Is in Actual Use in Commerce

 

Applicant is the owner of the mark.  The mark is in use in commerce and was in use in commerce as of the application filing date.

 

A specimen showing how the applicant uses the mark in commerce is submitted with this application.  This specimen shows the mark as used in commerce as of the application filing date.

 

Specify Date of Applicant’s First Use Anywhere:

 

Specify Date of Applicant’s First Use in Commerce:

 

B  ____  Trademark Act Section 1(b) – Intent to Use Mark in Commerce

 

Applicant is entitled to use the mark in commerce on or connection with the goods and/or services specified in the application.  Applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date.

 

C  ____  Trademark Act Section 44(d) – Prior-filed Foreign Application

 

Applicant is entitled to use the mark in commerce on or connection with the goods and/or services specified in the application.  Applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date.

 

Specify Country of Foreign Filing:

 

Specify Foreign Application Serial Number:

 

Specify Date Foreign Application Filed:

 

D  ____  Trademark Act Section 44(e) – Prior-filed Foreign Registration

 

Applicant is entitled to use the mark in commerce on or connection with the goods and/or services specified in the application.  Applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date.

 

Specify Country of Foreign Registration:

 

Specify Foreign Registration Number:

 

Specify Registration Date:

 

DECLARATION:  Applicant must submit the declaration immediately below, properly signed and dated.  Submitting a declaration online using the Trademark Electronic Application System (TEAS) response form will satisfy this requirement.

 

The signatory believes that:  if the application is being filed under 15 U.S.C. §1051(a), the applicant is the owner of the mark; the mark is in use in commerce and was in use in commerce as of the application filing date; the original specimen(s), if applicable, shows the mark as used on or in connection with the goods and/or services as of the application filing date; and/or if the application is being filed under 15 U.S.C. §1051(b), §1126(d), and/or §1126(e), the applicant is entitled to use the mark in commerce on or connection with the goods and/or services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date.  The signatory believes that to the best of the signatory’s knowledge and belief, no other person has the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when applied to the goods and/or services of such other person, to cause confusion or mistake, or to deceive.  The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements and the like may jeopardize the validity of the application or any registration resulting therefrom, declares that all statements made of his or her own knowledge are true and all statements made on information and belief are believed to be true. 

 

________________________________________________

(Signature)

 

________________________________________________

(Print or Type Name and Position)

 

________________________________________________

(Date)

 

Failure to comply with a request for information is grounds for refusing registration.  In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.  Merely stating that information about the goods and services is available on applicant’s website is an insufficient response and will not make the relevant information of record.  See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).

 

HIRING TRADEMARK ATTORNEY ADVISORY

 

Because of the legal technicalities and strict deadlines involved in the USPTO application process, applicant may wish to hire a private attorney specializing in trademark matters to represent applicant in this process and provide legal advice.  Although the undersigned trademark examining attorney is permitted to help an applicant understand the contents of an Office action as well as the application process in general, no USPTO attorney or staff is permitted to give an applicant legal advice or statements about an applicant’s legal rights.  TMEP §§705.02, 709.06. 

 

For attorney referral information, applicant may consult the American Bar Association’s Consumers’ Guide to Legal Help; an online directory of legal professionals, such as FindLaw®; or a local telephone directory.  The USPTO, however, may not assist an applicant in the selection of a private attorney.  37 C.F.R. §2.11.

 

RESPONSE GUIDELINES

 

Response guidelines.  For this application to proceed, applicant must explicitly address each refusal and requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  For a requirement, applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal and requirements in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

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 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.  

 

/Joanna Han/

Joanna Han

Trademark Examining Attorney

Law Office 126

(571) 270-3617

joanna.han@uspto.gov

 

TO RESPOND TO THIS LETTER:  Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application.  For technical assistance with online forms, e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned trademark examining attorney.  E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

 

All informal e-mail communications relevant to this application will be placed in the official application record.

 

WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants).  If an applicant is represented by an attorney, the attorney must sign the response. 

 

PERIODICALLY CHECK THE STATUS OF THE APPLICATION:  To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/.  Please keep a copy of the TSDR status screen.  If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199.  For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

 

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 2/27/2019 FOR U.S. APPLICATION SERIAL NO. 88200712

 

Your trademark application has been reviewed.  The trademark examining attorney assigned by the USPTO to your application has written an official letter to which you must respond.  Please follow these steps:

 

(1)  Read the LETTER by clicking on this link or going to http://tsdr.gov.uspto.report/, entering your U.S. application serial number, and clicking on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification. 

 

(2)  Respond within 6 months (or sooner if specified in the Office action), calculated from 2/27/2019, using the Trademark Electronic Application System (TEAS) response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  A response transmitted through TEAS must be received before midnight Eastern Time of the last day of the response period.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions. 

 

(3)  Questions about the contents of the Office action itself should be directed to the trademark examining attorney who reviewed your application, identified below. 

 

/Joanna Han/

Joanna Han

Trademark Examining Attorney

Law Office 126

(571) 270-3617

joanna.han@uspto.gov

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp. 

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.