Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

FINAL 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) 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 09, 2019

 

 

This Office action is in response to applicant’s communication filed on August 16, 2019.

 

In a previous Office action dated April 1, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following:  Trademark Act Sections 1, 2, 3, and 45 for failure to function as a service mark and for failure to show the applied-for mark in use in commerce with any of the specified services. 

 

In addition, the following refusal has been withdrawn:  applicant provided acceptable specimen.  See TMEP §§713.02, 714.04. 

 

Further, the trademark examining attorney maintains and now makes FINAL the refusal 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:

• Sections 1, 2, 3, and 45 Refusal – Failure to Function as a Service Mark

 

SECTIONS 1, 2, 3, AND 45 REFUSAL – FAILURE TO FUNCTION AS A SERVICE MARK

For the reasons set forth below, the refusal is now made FINAL under Trademark Act Sections 1, 2, 3, and 45 for failure to function as a service mark.  See 15 U.S.C. §§1051-1053, 1127; 37 C.F.R. §2.63(b).

 

On April 1, 2019, the trademark examining attorney issued a refusal for the applied-for mark under Trademark Act Sections 1, 2, 3, and 45 for failure to function as a service mark.  Response options for overcoming that refusal were set forth in the prior Office Action.  However, applicant’s substitute specimen is an advertisement that only shows the mark in connection with one live performance, the date of which is not provided. 

 

The refusal under Trademark Act Sections 1, 2, 3, and 45 is now made FINAL because the applied-for mark, as used on the specimen of record, is a personal name that identifies only the name of a specific individual or group; it does not function as a service mark to identify and distinguish applicant’s services from those of others and to indicate the source of applicant’s services.  Trademark Act Sections 1, 2, 3 and 45, 15 U.S.C. §§1051-1053, 1127; see In re Mancino, 219 USPQ 1047 (TTAB 1983); In re Lee Trevino Enters., 182 USPQ 253 (TTAB 1974); TMEP §§904.07(b), 1301.02(b).

 

The personal name of an individual or group is registrable as a service mark only where the record shows that it is used in a manner that would be perceived by consumers as identifying the services in addition to identifying the person or group.  See In re Mancino, 219 USPQ at 1048; In re Carson, 197 USPQ 554, 555 (TTAB 1977); TMEP §1301.02(b).  In this case, the specimen shows the applied-for mark used only to identify the name of an individual and not as a service mark for applicant’s services because the specimen only shows the mark in use with one live performance.  Furthermore, the specimen specifically advertises a “Performance By LIVIN”.  Thusly, the mark “LIVIN” would only bring to mind the identity of the performer and not the service of providing live musical performances or any of the other applied-for services.

 

For live entertainment services, some examples of acceptable specimens to overcome this refusal include:

·         (1) A photograph of the group or individual in performance with the name displayed, e.g., the name printed on the drum of a band. 

·         (2) Screenshots of tour dates from the artist’s website (NOTE: tour dates must precede the filing date of the application).

·         (3) Multiple flyers showing performances at a variety of venues to show that the artist is providing a service in commerce.

For any entertainment service, advertisements or radio or television listings showing the mark may be submitted, but the specimens must show that the mark is used to identify and distinguish the services recited in the application, not just the performer.  A designation that identifies only the performer is not registrable as a service mark.  See TMEP §1301.02(b) regarding the registrability of names of characters or personal names as service marks.

 

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)

 

 

 

/Douglas A. Mondell/

Douglas A. Mondell, Esq.

Law Office 127

(571) 272-0120

douglas.mondell@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 September 09, 2019 for

U.S. Trademark Application Serial No. 88264536

 

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. 

 

 

/Douglas A. Mondell/

Douglas A. Mondell, Esq.

Law Office 127

(571) 272-0120

douglas.mondell@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 September 09, 2019, 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.”