To: | Steel Supplements, Inc. (ghillyer@hillyerlegal.com) |
Subject: | U.S. Trademark Application Serial No. 88225758 - STEEL 7,3-ANDRO3 - N/A |
Sent: | January 17, 2020 07:47:35 PM |
Sent As: | ecom114@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88225758
Mark: STEEL 7,3-ANDRO3
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Correspondence Address: 5335 WISCONSIN AVENUE, N.W., SUITE 440
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Applicant: Steel Supplements, Inc.
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Reference/Docket No. N/A
Correspondence Email Address: |
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NONFINAL 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). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: January 17, 2020
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.
MARK DIFFERS ON DRAWING AND SPECIMEN
Registration is refused because the specimen does not show the mark in the drawing in use in commerce in International Class 005, which is required in the statement of 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(b); TMEP §807.12(a).
In this case, the specimen displays the mark as STEEL 7,3-ANDRO3 with the “3” as a superscript to the right above the letter “O”. However, the drawing displays the mark as STEEL 7,3-ANDRO3. The mark on the specimen does not match the mark in the drawing because of the superscript number “3”. Applicant has thus failed to provide the required evidence of use of the mark in commerce. See TMEP §807.12(a).
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(b). The following amended description is suggested, if accurate: “The mark consists of the stylized word STEEL directly above 7,3-ANDRO3 with the 3 as a superscript number to the right above the letter O.” 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(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 in the statement of use, and (b) was in actual use in commerce prior to the expiration of the deadline for filing the statement of use.
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, however, may not respond by withdrawing the statement of use. See 37 C.F.R. §2.88(f); TMEP §1109.17.
For more information about drawings and instructions on how to satisfy these response options online using the Trademark Electronic Application System (TEAS) form, see the Drawing webpage.
DRAWING FORMAT
The drawing was filed in standard character format. Please note, if the applicant amends the drawing to match the display of the mark on the specimen of record containing a superscript number “3”, the applicant must amend the drawing format to a special form drawing. A special form drawing is required for marks that contain superscripts, subscripts, exponents, or other characters that are not in the USPTO’s standard character set. In re AFG Indus. Inc., 17 USPQ2d 1162, 1164 (TTAB 1990) (requiring special form drawing for raised numeral). See TMEP §807.03(b) regarding the USPTO’s standard character set). TMEP 807.04(b).
ASSISTANCE
How to respond. Click to file a response to this nonfinal Office action.
/AKhan/
Asmat Khan
Trademark Examining Attorney
Law Office 114
(571)-272-9453
asmat.khan@uspto.gov
RESPONSE GUIDANCE