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:  May 20, 2020

 

INTRODUCTION

 

This Office action is supplemental to and supersedes the previous Office action issued on October 22, 2019 in connection with this application.  Based on information and/or documentation in applicant’s response, the trademark examining attorney now issues the following new requirement: Proposed Amendment Exceeds Scope of the Application. See TMEP §§706, 711.02. 

 

In a previous Office action dated October 22, 2019, the trademark examining attorney continued and made final a refusal of registration of the applied-for mark based on the ornamental use of the mark on the specimen of record.

 

In response, Applicant has provided a substitute specimen, which is unacceptable for the reasons identified below, and has amended the identification and classification of goods and services beyond the scope of the original application.

 

As a result, the following is a SUMMARY OF ISSUES that applicant must address:

 

            •  NEW ISSUE:  Identification of Goods and Services Amendment Unacceptable

            •  Specimen Unacceptable

 

Applicant must respond to all issues raised in this Office action and the previous October 22, 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).

 

IDENTIFICATION OF GOODS AND SERVICES AMENDMENT UNACCEPTABLE

 

The proposed amendment to the identification is not acceptable because it exceeds the scope of the identification in the application.  See 37 C.F.R. §§2.32(a)(6), 2.71(a); TMEP §§805, 1402.06 et seq., 1402.07.  Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, the original identification in the application, and any previously accepted amendments, remain operative for purposes of future amendment.  See 37 C.F.R. §2.71(a); TMEP §1402.07(d).

 

In this case, the application originally identified the goods and/or services as follows:  “Hoodies; Shirts; Shorts; Socks”

 

However, the proposed amendment identifies the following goods and/or services:  “Online retail store services featuring hoodies; shirts; shorts; socks”. 

 

This proposed amendment is beyond the scope of the original identification because the original application identified only goods and the proposed amendment identifies that Applicant provides a service rather than goods. 

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See TMEP §1402.07(e).

 

For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

 

Applicant is advised of the following grounds for refusal which is maintained and continued.

 

SPECIMEN UNACCEPTABLE

 

Webpage specimen does not include required URL and/or date printed/accessed.  Registration is refused because the specimen is not acceptable as a webpage specimen; it lacks the required URL and/or date printed/accessed.  See 37 C.F.R. §2.56(c); Mandatory Electronic Filing & Specimen Requirements, Examination Guide 1-20, at V.B. (Rev. Feb. 2020).  The specimen thus appears to be in the nature of a digital mockup that fails to show the applied-for mark in actual use in commerce.  See 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, 904.03(g), 904.07(a).  An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark as actually used in commerce for each international class of goods and 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).

 

A webpage submitted as a specimen must include the URL and access or print date to show actual use in commerce.  37 C.F.R. §2.56(c).  Because the webpage specimen lacks the associated URL and/or access or print date on it, within the TEAS form used to submit the specimen, or in a verified statement in a later-filed response, it is unacceptable to show use of the mark in commerce. 

 

Examples of specimens.  Specimens for goods include a photograph of (1) the actual goods bearing the mark; (2) an actual container, packaging, tag or label for the goods bearing the mark; or (3) a point-of-sale display showing the mark directly associated with the goods.  See 37 C.F.R. §2.56(b)(1), (c); TMEP §904.03(a)-(m).  A webpage specimen submitted as a display associated with the goods must show the mark in association with a picture or textual description of the goods and include information necessary for ordering the goods.  TMEP §904.03(i); see 37 C.F.R. §2.56(b)(1), (c). 

 

Specimens for services must show a direct association between the mark and the services and include:  (1) copies of advertising and marketing material, (2) a photograph of business signage or billboards, or (3) materials showing the mark in the sale, rendering, or advertising of the services.  See 37 C.F.R. §2.56(b)(2), (c); TMEP §1301.04(a), (h)(iv)(C). 

 

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

 

(1)       Submit a verified statement, in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20 or 28 U.S.C. §1746, specifying the URL of the original webpage specimen and the date it was accessed or printed.

 

(2)       Submit a different specimen (a verified “substitute” specimen), including the URL and date accessed/printed on it, 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 and/or services identified in the application or amendment to allege use.  Applicant must also submit 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.”

 

(3)       Amend the filing basis to intent to use under Section 1(b) (which includes withdrawing an amendment to allege use, if one was filed), as no specimen is required before publication.  This option will later necessitate additional fee(s) and filing requirements, including a specimen.

 

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.  

 

 

RESPONSE GUIDELINES

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06. 

 

The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

 

 

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How to respond.  Click to file a response to this nonfinal Office action.    

 

 

Riso, Mark

/Mark Riso/

Trademark Examining Attorney

Law Office 108

(571)272-0167

Mark.Riso@uspto.gov

 

 

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 May 20, 2020 for

U.S. Trademark Application Serial No. 88260150

 

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. 

 

 

Riso, Mark

/Mark Riso/

Trademark Examining Attorney

Law Office 108

(571)272-0167

Mark.Riso@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 May 20, 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.”