To: | J-Tech Digital, Inc. (feng.shan@szdclaw.com) |
Subject: | U.S. Trademark Application Serial No. 88258231 - Z-NET - 20100.030.02 |
Sent: | September 30, 2019 06:09:27 PM |
Sent As: | ecom107@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88258231
Mark: Z-NET
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Correspondence Address:
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Applicant: J-Tech Digital, Inc.
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Reference/Docket No. 20100.030.02
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 30, 2019
This Office action is in response to applicant’s communication filed on 9/26/19.
In a previous Office action(s) dated 8/17/19, the trademark examining attorney refused registration of the applied-for mark based on the following: failure to show use of the mark in Class 42; requirement for an amendment of the identification in Class 9.
Based on applicant’s response, the trademark examining attorney notes that the following requirement(s) have been satisfied: Class 9 identification. See TMEP §§713.02, 714.04.
Further, the trademark examining attorney maintains and now makes FINAL the refusal(s) and/or requirement(s) in the summary of issues below. See 37 C.F.R. §2.63(b); TMEP §714.04.
SUMMARY OF ISSUES MADE FINAL that applicant must address:
SPECIMEN REFUSAL – CLASS 42
As an initial matter, applicant did not provide a declaration with the substitute specimen, indicating its belief that one was not required. Applicant is respectfully reminded that the USPTO does not accept materials submitted as specimens without proper verification. See 37 C.F.R. §§2.34(a)(1), 2.59(a)-(b)(1), 2.76(b)(2); In re Adair, 45 USPQ2d 1211, 1212 n.2 (TTAB 1997). Thus, even if this specimen were acceptable in content, it could not be accepted because it is not verified.
However, the specimen is also unacceptable for the following reason:
Registration is refused because the specimen does not show the applied-for mark in use in commerce in International Class(es) 42. 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). Specifically, applicant’s substitute specimen shows the mark on an icon for a downloaded mobile application on a tablet device, what appears to be the opened downloaded software program, and an operating system notice indicating that the “app” is trying to access information on the user’s machine. Industry custom indicates that this icon represents a mobile application that the consumer has downloaded. Further, the wording “app” on the operating system notice indicates that this is a downloadable good. However, applicant has applied to register the mark in connection with the service of “Providing online, temporary use of non-downloadable software platform for operating a video projection device” in Class 42. Thus, showing use of the mark in connection with a Class 9 downloadable software product is insufficient to show use of the mark in connection with the Class 42 temporary use services. Therefore, Class 42 is not supported by an acceptable specimen, and registration is refused in that class.
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). Specimens comprising advertising and promotional materials must show a direct association between the mark and the services. 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.
PARTIAL ABANDONMENT ADVISORY
Response guidelines. For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
If applicant does not timely respond to this Office action, the following class will be deleted from the application: Class 42. See 37 C.F.R. §2.65(a); TMEP §718.02(a).
In such case, the application will then proceed with the following class only: Class 9. See TMEP §718.02(a).
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)
Diane Collopy
/Diane Collopy/
Trademark Examining Attorney
Law Office 107
diane.collopy@uspto.gov
(571) 270-3118 (informal communication only)
RESPONSE GUIDANCE