Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

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: August 09, 2019

 

 

INTRODUCTION

 

This Office action is supplemental to and supersedes the previous Office action issued on March 25, 2019 in connection with this application.  Based on information and/or documentation in applicant’s response and new USPTO rules and requirements, the trademark examining attorney now issues the following new requirement(s) and refusal(s):  U.S. Counsel Requirement, Validity of Use in Commerce and Ownership Refusal.  See TMEP §§706, 711.02. 

 

In a previous Office action(s) dated March 25, 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 addition, applicant was required to satisfy the following requirement(s): provide a mark description and information about the specimen.

 

The trademark examining attorney notes that the following requirement(s) have been satisfied: sufficient mark description provided.  See TMEP §§713.02, 714.04. 

 

 

The following is a SUMMARY OF ISSUES that applicant must address:

 

            •  NEW ISSUE:  Ownership Refusal

            •  NEW ISSUE:  Validity of Use in Commerce

            •  NEW ISSUE:  U.S. Counsel – Required

            •  Specimen Unacceptable (maintained)

            •  Request for Information (Specimen) (maintained)      

 

 

OWNERSHIP REFUSAL

 

Registration is refused because applicant does not appear to have been the owner of the mark and/or entitled to use the mark as of the filing date of the application.  Trademark Act Sections 1, 5, and 45, 15 U.S.C. §§1051, 1055, 1127; see TMEP §§1201.02(b), 1201.03.  The application identifies the owner of the mark as Shaoxing Xiangying Textile Co., Ltd.; however, the attached evidence, namely, applicant's information statement, shows that the owner of the mark appears to be Zhejiang Yuncheng Network Technology Co., Ltd. 

 

Use of a mark by a related company inures to the benefit of the party who controls the nature and quality of the goods sold or services rendered under the mark.  Noble House Home Furnishings, LLC v. Floorco Enters., LLC, 118 USPQ2d 1413, 1421 (TTAB 2016); TMEP §§1201.01, 1201.03.  This party is the owner of the mark and, therefore, the only party who may apply to register the mark.  TMEP §1201.03; see Smith Int’l, Inc. v. Olin Corp., 209 USPQ 1033, 1044 (TTAB 1981).

 

If the mark is not being used by applicant but rather by a related company whose use inures to the benefit of applicant, applicant may provide a statement to that effect.  See 37 C.F.R. §2.38(b); TMEP §1201.03(a).  Specifically, applicant may overcome this refusal by stating “Applicant has adopted and is using the mark through its related company.”  See TMEP §1201.03(a).

 

However, if the mark is being used by both applicant and a related company, but applicant is relying on its own use in the application, applicant should disclose this fact and will not be required to reference the related company’s use.  Id. 

 

An application must be filed by the party who owns or is entitled to use the mark as of the application filing date; otherwise, the application is void.  37 C.F.R. §2.71(d); see 15 U.S.C. §1051; Lyons v. Am. Coll. of Veterinary Sports Med. & Rehab., 859 F.3d 1023, 1027, 123 USPQ2d 1024, 1027 (Fed. Cir. 2017) (citing Aycock Eng’g, Inc. v. Airflite, Inc., 560 F.3d 1350, 1357, 90 USPQ2d 1301, 1305 (Fed. Cir. 2009); Holiday Inn v. Holiday Inns, Inc., 534 F.2d 312, 319 n.6, 189 USPQ 630, 635 n.6 (C.C.P.A. 1976)).

 

Applications filed in the name of the wrong party cannot be cured by amendment or assignment.  See 37 C.F.R. §2.71(d); TMEP §803.06.  Instead, the owner must file a new application.

 

 

VALIDITY OF USE IN COMMERCE

 

The application record indicates that the applied-for mark may not in use in a type of commerce that the U.S. Congress may lawfully regulate.  Specifically, the invoice that applicant has provided showing alleged sales of its goods as used in connection with the mark as being sold to a company based in France, Aloha, and not the United States of America.  Please reference the application record.   

 

The Trademark Act defines “commerce” as all commerce “which may lawfully be regulated by [the U.S.] Congress.”  15 U.S.C. §1127; TMEP §901.01.  Further, the Trademark Act defines “use in commerce” as follows:

 

[T]he bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark.  For purposes of this [Act], a mark shall be deemed to be in use in commerce–

 

(1) on goods when–

 

(A)       it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and

 

(B)       the goods are sold or transported in commerce, and

 

(2) on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services.

 

15 U.S.C. §1127; TMEP §901.01.

 

 

Thus, applicant must clarify whether the mark is actually in use in this type of commerce.  15 U.S.C. §1127; see 37 C.F.R. §2.61(b); TMEP §§814, 901.04. 

 

For example, a trademark may be used in such commerce with goods when (1) goods bearing the mark are sold across state lines; (2) an applicant operates its own outlets in more than one state and sells goods bearing the mark through these outlets; or (3) an applicant’s licensees or franchisees are located in more than one state, and the licensees or franchisees use the mark.  See TMEP §901.03.

 

Applicant may respond to this issue by submitting one of the following:

 

(1)        A verified statement in an affidavit or signed declaration under 37 C.F.R. §2.20 that “the mark is in use in commerce that can be regulated by the U.S. Congress.”

 

(2)        A request to amend the application basis to a bona fide intention to use the mark in commerce under Trademark Act Section 1(b), if permitted by 37 C.F.R. §2.35.

 

TMEP §901.04.

 

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. 

 

 

U.S. COUNSEL – Required

 

Applicant must be represented by a U.S.-licensed attorney.  The application record indicates that applicant’s domicile is outside of the United States in China, but no attorney who is an active member in good standing of the bar of the highest court of a U.S. State or territory has been appointed to represent the applicant in this matter.  All applicants whose permanent legal residence or principal place of business is not within the United States or its territories must be represented by a U.S.-licensed attorney at the USPTO.  37 C.F.R. §§2.2(o), 2.11(a).  Thus, applicant is required to be represented by a U.S.-licensed attorney and must appoint one.  37 C.F.R. §2.11(a).  This application will not proceed to registration without such appointment and representation.  See id.  See Hiring a U.S.-licensed trademark attorney for more information.

 

To appoint or designate a U.S.-licensed attorney.  To appoint an attorney, applicant should (1) submit a completed Trademark Electronic Application System (TEAS) Revocation, Appointment, and/or Change of Address of Attorney/Domestic Representative form and (2) promptly notify the trademark examining attorney that this TEAS form was submitted.  Alternatively, if applicant has already retained an attorney, the attorney can respond to this Office action by using the appropriate TEAS response form and provide his or her attorney information in the form and sign it as applicant’s attorney.  See 37 C.F.R. §2.17(b)(1)(ii).

 

Attorneys must include the following information: 

 

Attorney bar information required.  Applicant’s attorney must provide the following bar information:  (1) his or her bar membership number, if the bar provides one; (2) the name of the U.S. state, commonwealth, or territory of his or her bar membership; and (3) the year of his or her admission to the bar.  37 C.F.R. §2.17(b)(3).  This information is required for all U.S.-licensed attorneys who are representing trademark applicants at the USPTO.  Id.  If the attorney’s bar does not issue bar membership numbers, applicant must state this for the record.  See id.

 

Attorney attestation required.  Applicant’s attorney must provide the following statement:  “I attest that I am an attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory).”  See 37 C.F.R. §2.17(b)(3).  This is required for all U.S.-licensed attorneys who are representing trademark applicants at the USPTO.  Id. 

 

Attorney email address required.  Applicant’s attorney must provide his or her email address for the record.  37 C.F.R. §2.32(a)(4). 

 

 

SPECIMEN UNACCEPTABLE (maintained)

 

Specimen refused.  The trademark examining attorney maintains the refusal to register the applied-for mark because the specimen in International Class(es) 24 appears to consist of a digitally altered image or a mock-up of the mark on the goods or their packaging and does not show the applied-for mark in actual use 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); TMEP §§904, 904.07(a). 

 

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).  “Use in commerce” means (1) a bona fide use of the applied-for mark in the ordinary course of trade (and not merely to reserve a right in the mark), (2) the mark is placed in any manner on the goods, packaging, tags or labels affixed to the goods, or displays that directly associate the mark with the goods and have a point-of-sale nature, and (3) the goods are actually sold or transported in commerce.  See 15 U.S.C. §1127.

 

An image of a product or packaging that has been digitally created or otherwise altered to include the mark does not show actual use of the mark in commerce.  See 15 U.S.C. §1127; TMEP §§904.04(a), 904.07(a); cf. In re Chica, Inc., 84 USPQ2d 1845, 1848 (TTAB 2007) (holding that “a mere drawing of the goods with an illustration of how the mark may be displayed” was not an acceptable specimen because it did not show actual use in commerce); In re The Signal Cos., 228 USPQ 956, 957-58 n.4 (TTAB 1986) (noting that a printer’s proof of an advertisement would not be an acceptable specimen because it does not show actual use in commerce).

 

In this case, the trademark examining attorney maintains that the cumulative records indicates that at least some of the specimens in the record appear to display the mark on the goods with an incongruous white or other type of border that indicates that the mark was digitally superimposed on the specimen.  Further, the applied-for mark appears to float on the packaging in a manner inconsistent with the containers for the goods and the resolution or sharpness of the applied-for mark is different than the remaining features of the goods and container.  Finally, the applied-for mark appears to be affixed to third party goods that may not be owned by applicant.  Therefore, the submitted specimens cannot currently be accepted.

 

The trademark examining attorney reserves her right to more fully address this issue if a final Office Action issues. 

 

 

REQUEST FOR INFORMATION (SPECIMEN)(maintained)

 

Additional information/documentation required.  To permit proper examination of the application record for compliance with use in commerce requirements, the trademark examining attorney maintains that applicant must provide further responses to the following requests for information and documentation about the specimen(s).  See 37 C.F.R. §2.61(b); TMEP §814.  Answer for each specimen/photograph/image previously provided.  For any website source submitted as supporting evidence, provide a digital copy of the entire webpage from top to bottom, as rendered in an Internet browser, that includes the URL and access or print date.  TMEP §710.01(b) (citing In re I-Coat Co., 126 USPQ2d 1730, 1733 (TTAB 2018)).

 

(1)        Identify the particular good(s) listed in the application for which the specimen(s) was submitted to show use of the mark.

 

(2)        Was the specimen created for submission with this application?  If so, specify the date each specimen was created.  If applicant obtained the image(s) of the goods shown in the specimen(s) from a third-party website, provide the URL of the website and a digital copy of relevant webpage(s) for each image.

 

(3)        Provide information about and examples of how applicant’s goods appear in the actual sales environment.

(a)        If sold in stores, provide a representative sample of the name(s) of the stores and of photographs showing the goods for sale in the named stores, such as photographs of the sales displays or goods on shelves with the mark. 

(b)        If sold online, provide a representative sample of the name(s) of the online retailers, the website URL(s) for each named retailer, and a digital copy of the webpages showing the goods for sale on the named website.

(c)        If sold in another type of sales environment (e.g., catalogs, trade shows), identify the environment and provide photographs and/or documentation showing the goods for sale in that environment. 

 

(4)        If the information in question (3) about how the goods appear in the actual sales environment is not available to applicant, please describe how applicant’s goods are sold or transported and provide photographs and other documentation showing how applicant’s mark appears on the goods and/or its packaging when the goods are sold or transported to or within the United States.

 

(5)        For each category of sales environment specified in response to questions (3) and (4), specify when the goods bearing the mark were first available for purchase within the United States, the date of the first sale of the goods to or within the United States, and whether the goods are still for sale to or within the United States in that environment.

 

(6)        For the goods identified in response to question (1), specify the dollar amount of sales with or within the United States and provide at least three invoices or other supporting documentation that show payments or other consideration made, redacting personal or private information of buyers as necessary.

 

Response options.  Applicant may respond to the refusal of registration due to the specimen’s failure to show actual use in commerce by amending the filing basis to allege intent to use the mark in commerce, for which no specimen is required now.  See 37 C.F.R. §2.34.  This option will later necessitate additional fee(s) and filing requirements such as providing a specimen. 

 

Alternatively, applicant may also respond to the refusal by submitting 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. 

 

For an overview of these response options and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, see the Specimen webpage.

 

If applicant submits a verified substitute specimen, applicant must also fully respond to all the requirements for information and documentation.  Failure to comply with a requirement to furnish information is grounds for refusing registration.  In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.  Merely stating that evidence is available on applicant’s or a third party website or providing a hyperlink of such a website is an insufficient response and will not make the additional information or materials of record.  See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).  However, amending the application filing basis to intent-to-use under Section 1(b) will resolve the requirements for information and documentation.

 

 

RESPONSE GUIDELINES

Applicant must respond to all issues raised in this Office action and outstanding issues from the previous March 25, 2019 Office action, within six (6) months of the date of issuance of this Office action.  37 C.F.R. §2.62(a); see TMEP §711.02.  If applicant does not respond within this time limit, the application will be abandoned.  37 C.F.R. §2.65(a).

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

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 nonfinal Office action  

 

 

/Erin Z. Dyer/

Erin Zaskoda Dyer

Examining Attorney

Law Office 103

(571) 272-9740

erin.zaskoda@uspto.gov (preferred)

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on August 09, 2019 for

U.S. Trademark Application Serial No. 88251538

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Erin Z. Dyer/

Erin Zaskoda Dyer

Examining Attorney

Law Office 103

(571) 272-9740

erin.zaskoda@uspto.gov (preferred)

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from August 09, 2019, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond.

 

 

 

GENERAL GUIDANCE

·         Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·         Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·         Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”