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 18, 2020

 

 

This Office action is supplemental to and supersedes the previous Office action issued on February 23, 2020 in connection with this application.  The assigned trademark examining attorney inadvertently omitted a requirement relevant to the mark in the subject application.  See TMEP §§706, 711.02.  Specifically, the previous Office Action was silent as to whether the partial abandonment advisory also applied to those services outlined in International Class 42. Therefore, this Office Action is issued to clarify that the specimen refusal included in the Office Action dated February 23, 2020 applied only to those goods in International Class 10, and the specimens submitted in connection with goods and services in International Classes 9 and 42 are currently acceptable.

 

The trademark examining attorney apologizes for any inconvenience caused by the delay in raising this issue(s). 

 

Applicant must address all issue(s) raised in this Office action, in addition to the issues raised in the Office action dated February 23, 2020.  The issue(s) raised in the previous February 23, 2020 Office action is as follows and is:  failure to show the mark in use in commerce with any of the specified goods in Class 10. 

 

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

 

            •  Specimen Refusal – Partial as to Class 10

            •  Partial Abandonment Advisory

            •  Statement of Use May Not Be Withdrawn

 

Applicant must respond to all issues raised in this Office action and the previous February 23, 2020 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).

 

SPECIMEN

 

Applicant should note that the following refusal pertains only to those goods outlined in International Class 10. The specimens submitted in connection with the goods recited in International Classes 9 and 42 are currently acceptable.

 

Advertising for goods is not an acceptable specimen.  Registration is refused because the specimen appears to be mere advertising and does not properly show the applied-for mark as actually used in commerce in International Class 10.  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, 904.04(b), 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 identified in the statement of 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). 

 

Specifically, applicant submitted photos of a login page associated with applicant’s software goods as well as what appears to be a brochure for applicant’s International Class 10 medical goods. However, this type of advertising material is insufficient to show use of the mark in commerce with the applied for goods.

 

Advertising is not acceptable as a specimen for goods.  See In re Siny Corp., 920 F.3d 1331, 1336, 2019 USPQ2d 127099, at *2-3 (Fed. Cir. 2019) (citing Powermatics, Inc. v. Globe Roofing Prods. Co., 341 F.2d 127, 130, 144 USPQ 430, 432 (C.C.P.A. 1965)); see also Avakoff v. S. Pac. Co., 765 F.2d 1097, 1098, 226 USPQ 435, 436 (Fed. Cir. 1985); TMEP §904.04(b), (c).  Advertising includes online advertising banners appearing on search-engine results pages or in social media, advertising circulars and brochures, price lists, and business cards.  See TMEP §904.04(b). 

 

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).  Any webpage printout or screenshot submitted as a specimen must include the webpage’s URL and the date it was accessed or printed.  37 C.F.R. §2.56(c).

 

Response option.  Applicant may respond to this refusal by submitting, for each applicable international class, a different specimen (a 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 identified in 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.

 

Applicant may not withdraw the statement of use.  See 37 C.F.R. §2.88(f); TMEP §1109.17.

 

For an overview of this response option and instructions on how to submit a different specimen using the online Trademark Electronic Application System (TEAS) form, see the Specimen webpage. 

 

PARTIAL ABANDONMENT ADVISORY

 

If applicant does not respond to this Office action within the six-month period for response, International Class 10 will be deleted from the application.  The application will then proceed with International Classes 9 and 42 only.  See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).

 

STATEMENT OF USE MAY NOT BE WITHDRAWN

 

Once a statement of use has been filed, it cannot be withdrawn even if the Office determines that the statement of use does not comply with the minimum filing requirements.  37 C.F.R. §2.88(f); In re Informix Software, Inc., 32 USPQ2d 1861 (Comm’r Pats. 1993); TMEP §1109.17.

 

COMMUNICATIONS WITH THE TRADEMARK OFFICE

 

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.    

 

 

/Lauren R. Roncoroni/

Lauren R. Roncoroni

Trademark Examining Attorney

Law Office 109

(571) 270-5661

Lauren.Roncoroni@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 August 18, 2020 for

U.S. Trademark Application Serial No. 88260912

 

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. 

 

 

/Lauren R. Roncoroni/

Lauren R. Roncoroni

Trademark Examining Attorney

Law Office 109

(571) 270-5661

Lauren.Roncoroni@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 August 18, 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.”