To: | Oh So Cheesy LLC (nichole@innovative.lawyer) |
Subject: | U.S. Trademark Application Serial No. 88242625 - OH - SO ORIG CHEESY CHEESE CO. - N/A |
Sent: | September 23, 2019 08:28:34 AM |
Sent As: | ecom108@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88242625
Mark: OH - SO ORIG CHEESY CHEESE CO.
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Correspondence Address:
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Applicant: Oh So Cheesy LLC
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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 23, 2019
This Office action is in response to applicant’s communication filed on September 20, 2019.
FINAL Requirement – Mark Description
Here, applicant’s mark description indicates that there are contrasting rings of color that rim the circular background. However, the amended drawing does not show these rings. Therefore, applicant must either amend the drawing to match the description or amend the mark description to match the drawing. Applicant may amend the mark in the drawing to match the mark on the specimen / mark description, but applicant 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.
Registration is refused because the specimen does not show the mark in the drawing in use in commerce, which is required in the application. 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). This requirement is now made FINAL.
In this case, the specimen displays the mark with contrasting rings of color in the circular background shape wherein the “CHEESY” wording extends beyond the solid color circle and into the contrasting rings of color. However, the drawing displays the mark with a solid colored circular background entirely encompassing the wording “CHEESY”. The mark on the specimen does not match the mark in the drawing because the circular rings affect the overall commercial impression of the mark, which does not appear in the drawing. 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 mark description that agrees with the new drawing. See 37 C.F.R. §2.72(a)-(b). The following amended description is suggested, if accurate: “The mark consists of a circle containing four lines of text: the first line being "OH-SO", the second line being "ORIG" with a horizontal line on either side of this text, the third line being "CHEESY", which appears placed over a wedge of cheese with a horizontal line on either side, and the fourth line of text being "CHEESE CO." 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) that (a) shows the mark in the drawing in actual use in commerce for the goods in the application, and (b) was in actual use in commerce at least as early as the filing date of the application.
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).
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.
Response Guidelines
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)
/Andrea R. Hack/
Andrea Hack
Examining Attorney
Law Office 108
571-272-5413
andrea.hack@uspto.gov
RESPONSE GUIDANCE