To: | Inventa International, LLC (attorneys@brandxperts.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88257259 - THE LAST PARTY - II-TLP-20191 |
Sent: | 5/3/2019 8:31:36 AM |
Sent As: | ECOM106@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88257259
MARK: THE LAST PARTY
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Inventa International, LLC
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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: 5/3/2019
THIS IS A FINAL ACTION.
This Office Action is in response to applicant’s communication filed on Friday, April 12, 2019. The Examining Attorney has reviewed applicant’s response and finds applicant’s arguments unpersuasive.
For the reasons set forth below, the following issue is continued and made FINAL.
SPECIMEN REFUSAL – PARTIAL TO CLASS 45 ONLY
Registration was refused because the specimen in International Class 45 does not show a direct association between the applied-for mark and the identified services; thus the specimen fails to show the applied-for mark in 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), 1301.04(f)(ii), (g)(i). However, applicant has failed to submit a substitute specimen and argues that the original specimen is acceptable.
Specimens consisting of advertising or promotional materials must show a direct association between the mark and the services for which registration is sought. In re WAY Media, Inc., 118 USPQ2d 1697, 1698 (TTAB 2016) (quoting In re Universal Oil Prods. Co., 476 F.2d 653, 655, 177 USPQ 456, 457 (C.C.P.A. 1973)); TMEP §1301.04(f)(ii). To show this direct association, the specimen must contain an explicit reference to the services, in addition to the mark being used on the specimen to identify the service and its source. In re WAY Media, Inc., 118 USPQ2d at 1698 (quoting In re Osmotica Holdings, Corp., 95 USPQ2d 1666, 1668 (TTAB 2010)); TMEP §1301.04(f)(ii). While the exact nature of the services does not need to be specified in the specimen, there must be something which creates in the mind of the purchaser an association between the mark and the service. In re Adair, 45 USPQ2d 1211, 1215 (TTAB 1997) (quoting In re Johnson Controls Inc., 33 USPQ2d 1318, 1320 (TTAB 1994)).
Applicant states that the original specimen is acceptable because the specimen refers to “AFRICA IP EXPERTS” and “LET’S TALK ABOUT IP IN AFRICA”. In addition, the applicant states that the specimen refers to “the INTA (International Trademark Association) Annual Meeting that refers to the “importance of trademarks and brands to consumers, companies and the global economy” above a photograph of the Applicant's team who are providing the Section 45 services at that time and place, and beneath the photo include the words: INVENTA INTERNATIONAL had a booth in the exhibitors where the company's team members presented its IP solutions for Africa (with a link to the Applicant's website) ... As in the past edition Inventa International also hosted THE LAST PARTY.”
None of the arguments made in the applicant’s response are persuasive.
Applicant has applied to register the following services in International Class 45:
Attorney services, namely, representation of clients in intellectual propertymatters; Legal advisory services in the field of intellectual property; Legal consulting services in the field of intellectual property; Legal document preparation and research services for attorneys; Legal document preparation services; Legal information services; Legal services; Legal services in the nature of trademark monitoring; Legal services, namely, intellectual property consulting services in the field of identification, strategy, analytics, and invention; Legal services, namely, providing customized legal information, counseling, advice, and litigation services in all areas of law to people and families of modest incomes; Legal services, namely, providing customized documentation, information, counseling, advice and consultation services in all areas of intellectual property; Legal services, namely, trademark maintenance services; Legal services, namely, trademark searching and clearance services; Legal support services; Social networking services in the field of intellectual propertyprovided via a website; Providing legal services in the field of intellectual property; Providing customized legal information, counseling, and advice, and litigation services in the field of intellectual property; Providing information in the field of intellectual property legal services; Providing on-line information in the field of intellectual property legal services
The reference to “AFRICA IP EXPERTS” and “company team members presented its IP solutions for Africa” in the original specimen does not mean the individuals in the photo are attorneys or rendering legal services. As seen on page 11 in the original specimen and page six in the applicant’s response, the page states that the company’s team members (in the photo) presented IP SOLUTIONS for Africa. A “SOLUTION” cannot be broadly interpreted or defined as encompassing legal services or other services mentioned in International Class 45. In addition, the phrase “LET’S TALK ABOUT IP IN AFRICA” cannot be broad interpreted or understood that legal services are being rendered.
Moreover, on page 11 of the original specimen, it states “INTA’s 140th Annual Meeting that brought together about 11,000 Intellectual Property professionals. This increasing importance of trademarks and brands to consumers, companies, and the global economy was at the core of the debate.” This text does not support the applicant’s argument of providing legal services. This text simply tells us the purpose of INTA annual meetings.
Lastly, the additional links to articles that applicant mentions in the response are also unpersuasive because those links do not reference the legal services provided by the applicant.
Thus, the original specimen fails to show the applied-for mark in use in commerce with the identified services in International Class 45.
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 services 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 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). And, as stated above, specimens comprising advertising or promotional materials must show a direct association between the mark and the services. In re WAY Media, Inc., 118 USPQ2d at 1698 (quoting In re Universal Oil Prods. Co., 476 F.2d at 655, 177 USPQ at 457); TMEP §1301.04(f)(ii).
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 services 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.
RESPONSE GUIDELINES TO A FINAL ACTION
Applicant must respond within six months of the date of issuance of this final Office Action or the following class to which the final refusal apply will be deleted from the application by Examiner’s Amendment: International Class 45. 37 C.F.R. §2.65(a); see 15 U.S.C. §1062(b).
The application will then proceed for the following class: International Class 41.
Applicant may respond by providing one or both of the following:
(1) a response filed using the Trademark Electronic Application System (TEAS) that fully satisfies all outstanding requirements and/or resolves all outstanding refusals; and/or
(2) an appeal to the Trademark Trial and Appeal Board filed using the Electronic System for Trademark Trials and Appeals (ESTTA) with the required filing fee of $200 per class.
37 C.F.R. §2.63(b)(1)-(2); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.
In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues. TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters). There is a fee required for filing a petition. 37 C.F.R. §2.6(a)(15).
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.
/Marcya N. Betts/
Marcya N. Betts
Examining Attorney
Law Office 106
(571) 272-4913
Marcya.Betts@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.