To: | FGX International Inc. (IPDocketing@foley.com) |
Subject: | U.S. Trademark Application Serial No. 88210043 - HAPPY EYES. HAPPY WALLET. - 636198-3295 |
Sent: | May 18, 2020 08:56:54 AM |
Sent As: | ecom125@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88210043
Mark: HAPPY EYES. HAPPY WALLET.
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Correspondence Address: 2021 MCKINNEY AVNEUE, SUITE 1600
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Applicant: FGX International Inc.
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Reference/Docket No. 636198-3295
Correspondence Email Address: |
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FINAL 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) and/or Electronic System for Trademark Trials and Appeals (ESTTA). A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action.
Issue date: May 18, 2020
This Office action is in response to applicant’s communication filed on April 28, 2020.
In a previous Office action(s) dated October 29, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following: Specimen Refusal.
Further, the trademark examining attorney maintains and now makes FINAL the refusal(s) and/or requirement(s) in the summary of issues below. See 37 C.F.R. §2.63(b); TMEP §714.04.
SUMMARY OF ISSUES MADE FINAL that applicant must address:
SPECIMEN REFUSAL – MARK ON THE DRAWING AND SPECIMEN DIFFER
Mark shown on drawing does not match mark on specimen. Registration is refused because the specimen does not show the mark in the drawing in use in commerce in International Class(es) 35, which is required in the application or amendment to allege use. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a), 1301.04(g)(i). The mark appearing on the specimen and in the drawing must match; that is, the mark in the drawing “must be a substantially exact representation of the mark” on the specimen. See 37 C.F.R. §2.51(a)-(b); TMEP §807.12(a).
In this case, the specimen displays the mark as “HAPPY EYES HAPPY WALLET”. However, the drawing displays the mark as “HAPPY EYES. HAPPY WALLET.”, with a period after the word “EYES” and “WALLET”. The mark on the specimen does not match the mark in the drawing because it does not contain the punctuation depicted in the drawing. Applicant has thus failed to provide the required evidence of use of the mark in commerce. See TMEP §807.12(a).
Further, the specimen does not show a direct association between the mark and the services provided in connection with the mark. Specifically, the mark is buried in the text of applicant’s specimen. For this reason, the services are too attenuated from the mark in terms of proximity or logical connection. Therefore, the specimen must be refused.
Response options. Applicant may respond to this refusal by satisfying one of the following:
(1) Submit a new drawing of the mark that shows the mark on the specimen and, if appropriate, an amendment of the description and/or color claim that agrees with the new drawing. See 37 C.F.R. §2.72(a)-(b). Applicant may amend the mark in the drawing to match the mark on the specimen but may not make any other changes or amendments that would materially alter the drawing of the mark. See 37 C.F.R. §2.72(a)-(b); TMEP §807.14.
(2) Submit a different specimen (a verified “substitute” specimen) for each applicable international class that (a) shows the mark in the drawing in actual use in commerce for the goods and/or services in the application or amendment to allege use, and (b) 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.
Examples of specimens. 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).
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)(1), (c); TMEP §1301.04(a), (h)(iv)(C).
Any web page printout or screenshot submitted as a specimen, whether for goods or services, must include the webpage’s URL and the date it was accessed or printed. 37 C.F.R. §2.56(c).
For more information about drawings and instructions on how to satisfy these response options using the online Trademark Electronic Application System (TEAS) form, see the Drawing webpage.
In such case, the application will proceed for the following class(es) only: 9.
Applicant may respond to this final Office action by providing one or both of the following:
(1) A request for reconsideration that fully resolves all outstanding requirements and refusals; and/or
(2) An appeal to the Trademark Trial and Appeal Board with the required filing fees.
TMEP §715.01; see 37 C.F.R. §2.63(b)(1)-(2).
How to respond. Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).
/Laura M. Wright/
Trademark Examining Attorney
United States Patent and Trademark Office
Phone: (571) 272-5421
Email: laura.wright@uspto.gov
RESPONSE GUIDANCE