To: | Clark Associates, Inc. (dheard@clarkinc.biz) |
Subject: | U.S. Trademark Application Serial No. 88216223 - CHOICE YOUR CHOICE FOR VALUE - N/A |
Sent: | September 03, 2019 11:02:51 AM |
Sent As: | ecom121@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88216223
Mark: CHOICE YOUR CHOICE FOR VALUE
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Correspondence Address:
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Applicant: Clark Associates, Inc.
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Reference/Docket No. N/A
Correspondence Email Address: |
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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: September 03, 2019
This Office action is in response to applicant’s communication filed on August 7, 2019.
In a previous Office action dated March 12, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following: failure to show the applied-for mark in use in commerce with any of the specified goods in Classes 016 or 020. In addition, applicant was required to satisfy the following requirements: amend the identification of goods and clarify the mark description.
Based on applicant’s response, the trademark examining attorney notes that the following requirements have been satisfied: amend the identification of goods and clarify the mark description. See TMEP §§713.02, 714.04.
The following refusal(s) have also been obviated: Sections 1 and 45 refusal relating to Class 016. See TMEP §§713.02, 714.04.
Upon further review of applicant’s substitute specimen, the trademark examining attorney maintains and now makes FINAL the refusal 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:
I. SECTIONS 1 AND 45 REFUSAL – SPECIMEN
THIS PARTIAL REFUSAL APPLIES TO CLASS 020 ONLY
Applicant was previously refused registration in International Class 020 because the specimen submitted with the application appeared to be merely advertising material and/or a deficient electronic display. Response options for overcoming that refusal, if any, were set forth in the prior Office action. Applicant, however, responded to such refusal by submitting a substitute specimen for this refused international class that does not show proper use of the applied-for mark in commerce for the reasons immediately stated below. Thus, the refusal to register the applied-for mark in International Class 020 is now made final because applicant failed to provide evidence of use of the mark 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), 2.63(b); TMEP §§904, 904.07, 1301.04(g)(i).
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 and/or services 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 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 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 and/or services 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.
(2) 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 both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/specimen.jsp.
Applicant should note the partial abandonment advisory stated below.
II. PARTIAL ABANDONMENT ADVISORY
In such case, the application will proceed for the following classes only: 016, 021, and 025.
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 final Office action and/or appeal it to the Trademark Trial and Appeal Board (TTAB)
/Amer Raja/
Amer Raja
Examining Attorney
Law Office 121
(571) 270 5936
amer.raja@uspto.gov
RESPONSE GUIDANCE