To: | Marmiro Stones, Inc (samantha@marmiro.com) |
Subject: | U.S. Trademark Application Serial No. 88241567 - COBALT - N/A |
Sent: | July 11, 2019 05:02:01 PM |
Sent As: | ecom102@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88241567
Mark: COBALT
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Correspondence Address: |
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Applicant: Marmiro Stones, 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). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: July 11, 2019
This Office action is in response to applicant’s Amendment to Allege Use, filed on 6/19/19. The examining attorney has determined as follows:
SUMMARY OF ISSUES:
Please see below for details regarding all of the above.
AS TO THE WEBSITE EXCERPTS ONLY, REGISTRATION IS REFUSED BECAUSE THE WEBSITE EXCERPTS DO NOT COMPRISE AN ACCEPTABLE DISPLAY ASSOCIATED WITH THE GOODS AND APPEAR TO BE MERE ADVERTISING MATERIAL
To be acceptable, a specimen of a webpage display must include (1) a picture or sufficient textual description of applicant’s goods that (2) shows the mark associated with the goods, and (3) a way of ordering the goods (e.g., a “shop online” or “shopping cart” button or link, an order form, or a telephone number for placing orders). TMEP §904.03(i); see In re Sones, 590 F.3d 1282, 1286-89, 93 USPQ2d 1118, 1122-24 (Fed. Cir. 2009); In re Azteca Sys., Inc., 102 USPQ2d 1955, 1957-58 (TTAB 2012). If applicant’s specimen includes a telephone number, internet address, and/or mailing address that appears only with corporate contact information, the specimen may not show sufficient means for ordering the goods. See In re Genitope Corp., 78 USPQ2d 1819, 1822 (TTAB 2006); TMEP §904.03(i)(C)(2). In that circumstance, the specimen may also need to include instructions on how to place an order or an offer to accept orders. See In re Quantum Foods, Inc., 94 USPQ2d 1375, 1379 (TTAB 2010); TMEP §904.03(i)(C)(2).
In this case, the specimens do not include a way of ordering the goods. The specimens only show a picture of the applicant’s goods and the mark associated with the goods, but there is no “shopping cart” button or link, order form, etc. that would allow customers to place an order using the website. See In re Sones, 590 F.3d at 1286-89, 93 USPQ2d at 1122-24; In re Azteca Sys., Inc., 102 USPQ2d at 1957; TMEP §§904.03(i) et seq. Without this feature, the specimens are mere advertising material, which is generally not acceptable as a specimen for showing use in commerce for goods. See In re Kohr Bros., 121 USPQ2d 1793, 1794 (TTAB 2017) (quoting In re Quantum Foods, Inc., 94 USPQ2d at 1379); In re Genitope Corp., 78 USPQ2d at 1822; TMEP §904.04(b).
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 identified in the application or amendment to allege use. 15 U.S.C. §1051(a)(1); 37 C.F.R. §2.56(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. As stated above, webpage displays 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 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 the Specimen webpage.
Applicant should note the following additional ground for refusal.
AS TO THE BILL OF LADING ONLY, REGISTRATION IS REFUSED BECAUSE THE SPECIMEN IN INTERNATIONAL CLASS 19 CONSISTS OF MATERIAL USED BY APPLICANT TO CONDUCT ITS INTERNAL BUSINESS AND THUS DOES NOT SHOW THE APPLIED-FOR MARK IN USE IN COMMERCE FOR EACH INTERNATIONAL CLASS
As to the bill of lading only, registration is refused because the specimen in International Class 19 consists of material used by applicant to conduct its internal business and thus does not show the applied-for mark in use in commerce for each international class. 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). Generally, materials for conducting an applicant’s internal business or carrying out business dealings are not acceptable as specimens to show use in commerce for goods. See 15 U.S.C. §1127; 37 C.F.R. §2.56(b)(1); In re Chi. Rawhide Mfg. Co., 455 F.2d 563, 565, 173 USPQ 8, 9 (C.C.P.A. 1972); In re Bright of Am., Inc., 205 USPQ 63, 71 (TTAB 1979); TMEP §§904.03, 904.04(b), (c). “These materials include all documents whose sole function is to carry out the applicant’s business dealings, such as invoices, bill heads, waybills, warranties, and business stationery.” TMEP §904.04(b); see e.g., In re Chi. Rawhide Mfg. Co., 455 F.2d at 565, 173 USPQ at 9; In re Bright of Am., Inc., 205 USPQ at 65.
Specifically, the specimen consists of a bill of lading which is used by the applicant to conduct its internal business. The sole function of a bill of lading is to carry out the applicant’s business dealings, therefore, it does not show the applied-for mark in use in commerce to identify the source of the goods in the application, i.e., “Natural stone slabs and tiles.”
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 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 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.
INFORMATION REQUIREMENT CONTINUED
Although the following information requirement was included in the 3/27/19 Office action, the applicant did not respond in any way. Therefore, the information requirement is continued.
As explained previously, due to the potentially descriptive nature of the applied-for mark, applicant must provide the following information and documentation regarding the goods and/or services and wording appearing in the mark:
(1) Fact sheets, instruction manuals, brochures, advertisements and pertinent screenshots of applicant’s website as it relates to the goods and/or services in the application, including any materials using the terms in the applied-for mark. Merely stating that information about the goods and/or services is available on applicant’s website is insufficient to make the information of record.;
(2) If these materials are unavailable, applicant should submit similar documentation for goods and services of the same type, explaining how its own product or services will differ. If the goods and/or services feature new technology and information regarding competing goods and/or services is not available, applicant must provide a detailed factual description of the goods and/or services. Factual information about the goods must make clear how they operate, salient features, and prospective customers and channels of trade. For services, the factual information must make clear what the services are and how they are rendered, salient features, and prospective customers and channels of trade. Conclusory statements will not satisfy this requirement.; and
(3) Applicant must respond to the following questions: Does “cobalt” have any meaning as applied to the goods or in the relevant trade? Do the applicant’s goods contain cobalt? Are applicant’s goods cobalt blue in color? Do applicant’s competitors use “cobalt” to advertise similar goods?
See 37 C.F.R. §2.61(b); TMEP §§814, 1402.01(e).
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.
For this application to proceed, applicant must explicitly address each refusal and/or 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.
How to respond. Click to file a response to this nonfinal Office action
/Nancy L. Clarke/
Examining Attorney
Law Office 102
Tel. (571) 272-9253
E-mail: nancy.clarke@uspto.gov
ADDITIONAL RESPONSE GUIDANCE: