Reconsideration Letter

United States Patent and Trademark Office (USPTO)

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

 

 

 

REQUEST FOR RECONSIDERATION

AFTER FINAL ACTION

DENIED

 

 

Issue date:  July 21, 2020

 

 

Applicant’s request for reconsideration is denied.  See 37 C.F.R. §2.63(b)(3).  The trademark examining attorney has carefully reviewed applicant’s request and determined the request did not:  (1) raise a new issue, (2) resolve all the outstanding issue(s), (3) provide any new or compelling evidence with regard to the outstanding issue(s), or (4) present analysis and arguments that were persuasive or shed new light on the outstanding issue(s).  TMEP §§715.03(a)(ii)(B), 715.04(a). 

 

Specifically, applicant submitted two substitute specimens with an appropriate description of the specimens as screenshots of downloadable software. However, a statement of use must include a specimen, properly verified, showing the applied-for mark as actually used in commerce for each international class of goods and/or services identified in the statement of use.  15 U.S.C. §1051(d)(1); 37 C.F.R. §2.56(a); TMEP §§904, 1109.09(b).   

 

Applicant provided substitute specimens that appear to show use of the applied-for mark in commerce but are not verified.  The USPTO does not accept materials submitted as specimens without proper verification.  See 37 C.F.R. §2.59(b)(2); In re Adair, 45 USPQ2d 1211, 1212 n.2 (TTAB 1997). 

  

Response options.  Applicant may respond to this refusal by satisfying one of the following for each applicable international class: 

 

(1)        Submit a verification of the previously submitted substitute specimen, attesting that it was in actual use in commerce prior to the expiration of the deadline for filing the statement of 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 prior to expiration of the filing deadline for filing a statement of use.”  The substitute specimen cannot be accepted without this statement.

 

(2)        Submit a different and properly verified “substitute” specimen that (a) was in actual use in commerce prior to the expiration of the deadline for filing the statement of use and (b) shows the mark in actual use in commerce for the goods and/or services identified in the statement of use.  The substitute specimen cannot be accepted without the verified statement referenced in (1).

 

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

 

Accordingly, the following refusal made final in the Office action dated March 30, 2020 is maintained and continued: 

            •  Specimen Refusal

 

See TMEP §§715.03(a)(ii)(B), 715.04(a). 

 

If applicant has already filed an appeal with the Trademark Trial and Appeal Board, the Board will be notified to resume the appeal.  See TMEP §715.04(a).

 

If applicant has not filed an appeal and time remains in the six-month response period, applicant has the remainder of that time to (1) file another request for reconsideration that complies with and/or overcomes any outstanding final requirement(s) and/or refusal(s), and/or (2) file a notice of appeal to the Board.  TMEP §715.03(a)(ii)(B).  Filing a request for reconsideration does not stay or extend the time for filing an appeal.  37 C.F.R. §2.63(b)(3); see TMEP §715.03(c). 

 

 

/Scott Kumis/

Scott Kumis

Trademark Examining Attorney

Law Office 125

Phone: 571-272-2693

Email: scott.kumis@uspto.gov

 

 

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on July 21, 2020 for

U.S. Trademark Application Serial No. 88257225

 

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. 

 

 

/Scott Kumis/

Scott Kumis

Trademark Examining Attorney

Law Office 125

Phone: 571-272-2693

Email: scott.kumis@uspto.gov

 

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 July 21, 2020, 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.”