UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.  A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.

 

 

ISSUE/MAILING DATE: 4/2/2019

 

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.  

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

No Conflicting Marks Noted

 

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).

 

Mark is Merely Descriptive

 

The examining attorney refuses registration on the Principal Register because the proposed mark merely describes the services.  Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1); TMEP section 1209 et seq.

 

A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods and/or services.  TMEP §1209.01(b); see In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005); In re Gyulay, 820 F.2d 1216, 1217-18, 3 USPQ2d 1009, 1010 (Fed. Cir. 1987).  Moreover, a mark that identifies a group of users to whom an applicant directs its goods and/or services is also merely descriptive.  TMEP §1209.03(i); see In re Planalytics, Inc., 70 USPQ2d 1453, 1454 (TTAB 2004).

 

It is not necessary that a term describe all of the purposes, functions, characteristics or features of the services to be merely descriptive.  It is enough if the term describes one attribute of the services.  In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973).

 

The applicant applied to register the mark SIM (and design) for “dental imaging services; professional analysis of the face photographs of patients by processing and synthesizing data and information to determine the aesthetic ideal proportion of the patient's teeth and to help execute digital renderings of dental prostheses, implants, dental prototypes and provisional teeth for patients.”  The applicant’s mark is descriptive of the services because it describes a feature or characteristic of the services offered—namely, the way in which the services are designed to provide a simulation of something. 

 

The word “SIM” is a common abbreviation for the word “SIMULATION”.  Please see the attached evidence retrieved from acronymfinder.com.

 

The term “simulation” is defined as “the production of a computer model of something, especially for the purpose of study.”  Please see the attached dictionary definition retrieved from Oxford Dictionaries Online.

 

As applicant’s submitted specimen of use demonstrates, applicant’s services are designed to create a simulation of a patient’s smile and tooth alignment prior to receiving dental/orthodontic care.

 

Further, it is noted that the square background carrier does not render applicant’s mark registrable.  Background designs in composite marks consisting of common geometric shapes, such as circles, ovals, squares, triangles, diamonds, and other geometric designs, are generally not regarded as marks for goods and/or services absent a showing of distinctiveness in the design alone.  In re Anton/Bauer Inc., 7 USPQ2d 1380, 1381 (TTAB 1988) (citing In re Raytheon Co., 202 USPQ 317 (TTAB 1979)); TMEP §1202.11; see also Seabrook Foods, Inc. v. Bar-Well Foods Ltd., 568 F.2d 1342, 1344, 196 USPQ 289, 291 (C.C.P.A. 1977).

 

Thus, the mark SIM (and design) merely describes a characteristic or quality of applicant’s services.

 

Accordingly the mark is refused registration on the Principal Register under Section 2(e)(1).

 

Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.

 

If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following issues.

 

Registration Refused: Mark in Drawing/Specimen of Use

 

Registration is refused because the specimen does not show the mark in the drawing in use in commerce in International Class 44, 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 SMILE SIM (and design).  However, the drawing displays the mark as only SIM (and design).  The mark on the specimen does not match the mark in the drawing because it presents the wording “SMILE SIM” as a single, unitary mark which applicant has broken up in its 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 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 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).  Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and webpages that show the mark used in the actual sale, rendering, or advertising of the services.  See TMEP §1301.04(a), (h)(iv)(C).

 

(2)       Submit a request to 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.

 

The USPTO will not accept an amended drawing submitted in response to this refusal because the changes would materially alter the drawing of the mark in the original application or as previously acceptably amended.  See 37 C.F.R. §2.72(a)-(b); TMEP §807.14.  Specifically, adding the term “SMILE” to the applied for mark would be a material alteration of the originally submitted drawing because it would add a distinctive, searchable element to the originally submitted drawing.

 

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.

 

 

Identification of Services

 

The wording in the identification of services needs clarification because it is too broad and could include services classified in other international classes.  See TMEP §§1402.01, 1402.03.

 

For example, the wording “professional analysis of the face photographs of patients by processing and synthesizing data and information” is confusingly worded and indefinite, as this wording may reference a wide variety of underlying services properly classified in differing classes.

 

In studying applicant’s submitted specimen of use and website, the undersigned has concluded that applicant effectively offered digital photograph processing/touch-up type services, as further outlined below.

 

In the recitation of services, the applicant should use the common commercial designation for the services, be as complete and specific as possible, and avoid the use of indefinite words and phrases. The applicant may not include broad wording such as “services in connection with…” or “such as” or “including” or “and like services” or “systems” or “products” or “concepts” or “not limited to…” In addition, the applicant should avoid the use of parentheses in describing services. TMEP section 1402.

 

The applicant may amend this wording to the following, if accurate:

 

Class 41:         “Photographic computer imaging services, namely, imaging services designed to help execute digital renderings of dental prostheses, implants, dental prototypes and provisional teeth for dental patients so that patients may see the result of dental work prior to its execution”.

 

Class 42:         “Graphic illustration services for others, namely, illustration services designed to help execute digital renderings of dental prostheses, implants, dental prototypes and provisional teeth for dental patients so that patients may see the result of dental work prior to its execution”.

 

Class 44:         “Dental imaging services”.

 

See TMEP section 1402.11.

 

For the applicant’s convenience, the Trademark Acceptable Identification of Goods and Services Manual on the office’s website at http://tess2.gov.uspto.report/netahtml/tidm.html offers a searchable list of acceptable identifications and classifications. The Manual is a useful resource and guide, but it is not an exhaustive list of every acceptable identification.

 

Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  37 C.F.R. Section 2.71(a); TMEP section 804.09.  Therefore, the applicant may not amend to include any services that are not within the scope of the services recited in the present identification.

 

Combined Classes

 

Applicant must clarify the number of classes for which registration is sought.  The submitted filing fee is insufficient to cover all the classes in the application.  Specifically, the application identifies goods and/or services that may be classified in up to three (3) classes, however, the applicant paid for only one (1) class.

 

Applicant must either: (1) restrict the application to the number of class(es) covered by the fee already paid, or (2) pay the required fee for each additional class(es).  37 C.F.R. §2.86(a)(2); TMEP §§810.0l, 1401.04, 1401.04(b) and 1403.01.

 

If the applicant prosecutes this application as a combined, or multiple-class, application based on use in commerce under Trademark Act Section 1(a), 15 U.S.C. §1051(a), the applicant must comply with each of the following:

 

(1)  The applicant must specifically identify the goods and services in each class and list the goods and services by international class with the classes listed in ascending numerical order.  TMEP §1403.01.

 

(2)  The applicant must submit a filing fee for each international class of goods/services not covered by the fee already paid.  37 C.F.R. §§2.6(a)(1) and 2.86(b); TMEP §§810.01 and 1403.01.  Effective January 31, 2005 and pursuant to the Consolidated Appropriations Act, 2005, Pub. L. 108-447, the following are the fees that will be charged for filing a trademark application:

 

(a) $325 per international class if filed electronically using the Trademark Electronic Application System (TEAS); or 

 

(b)   $375 per international class if filed on paper

 

These fees will be charged not only when a new application is filed, but also when payments are made to add classes to an existing application. If such payments are submitted with a TEAS response, the fee will be  $325 per class, and if such payments are made with a paper response, the fee will be $375 per class.

 

The new fee requirements will apply to any fees filed on or after January 31, 2005.

 

The filing fee for adding classes to a TEAS Plus application is $275 per class, provided all the following requirements are satisfied:  (1) the fee(s) is submitted using the Trademark Electronic Application System (TEAS) at http://www.gov.uspto.report/teas/index.html or by examiner’s amendment; (2) applicant filed a complete TEAS Plus application; (3) applicant has filed and continues to file certain communications via TEAS (e.g., responses to Office actions); and (4) applicant maintains its authorization to receive Office communication via e-mail.  37 C.F.R. §§2.6(a)(1)(iii), 2.22(a), 2.23.

 

If any of the above TEAS Plus requirements are not satisfied, then applicant must submit a fee of $50 per class for all active classes in the application as filed; and the fee for adding any classes to the application shall be $325 per class if added via TEAS, or $375 per class if added in a paper response.  37 C.F.R. §§2.6(a)(1), 2.22(b), 2.23(b); see TMEP §810.

 

Telephone or Email Response

 

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §2.191; TMEP §§304.01-.02, 709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

 

 

 

/James Ringle/

Trademark Attorney

United States Patent and Trademark Office

Law Office 111

571-272-9393

jim.ringle@uspto.gov

 

 

 

 

TO RESPOND TO THIS LETTER:  Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application.  For technical assistance with online forms, e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned trademark examining attorney.  E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

 

All informal e-mail communications relevant to this application will be placed in the official application record.

 

WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants).  If an applicant is represented by an attorney, the attorney must sign the response. 

 

PERIODICALLY CHECK THE STATUS OF THE APPLICATION:  To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/.  Please keep a copy of the TSDR status screen.  If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199.  For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

 

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 4/2/2019 FOR U.S. APPLICATION SERIAL NO. 88243712

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 4/2/2019 (or sooner if specified in the Office action).  A response transmitted through the Trademark Electronic Application System (TEAS) must be received before midnight Eastern Time of the last day of the response period.  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the TEAS response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.