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:  October 30, 2019

 

This Office action is in response to applicant’s communication filed on October 3, 2019.

 

The applicant’s response created a number of new issues and didn’t resolve any of the outstanding issues. While the applicant submitted several substitute specimen, some do not match the drawing and others are unacceptable as they are not showing the mark in use for the services. Further, the applicant disclaimed the wrong term and the mark description and color claim are inaccurate. Additionally, the applicant entered an unnecessary 2(f) Claim of Acquired Distinctiveness. Please see the details below.

 

Refusal to Register – Color of Mark on Drawing and Specimen Differ

 

Registration is refused because the specimen does not show the mark in the drawing in use in commerce in International Class(es) 41 and 43, which is required in the application or amendment to allege use.  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).  The mark appearing on the specimen and in the drawing must match; that is, the mark in the drawing “must be a substantially exact representation of the mark” on the specimen.  See 37 C.F.R. §2.51(a)-(b); TMEP §807.12(a).

 

In this case, the specimen displays the mark as a business card in black with VIZION in a stylized font, and in green and white, where the letter Z is in white and the remaining letters are green. The term PRODUCTIONS is also in a stylized font, in the color white and centered beneath VIZION. All of the wording in the mark is surrounded by a partial rectangular box in white, that is broken apart at the bottom by the term PRODUCTIONS.  However, the drawing displays the mark as a black background with VIZION in a stylized font, and in red and white, where the letter Z is in white and the remaining letters are red. The term PRODUCTIONS is also in a stylized font, in the color white and centered beneath VIZION. All of the wording in the mark is surrounded by a partial rectangular box in white, that is broken apart at the bottom by the term PRODUCTIONS.  The mark on the specimen does not match the mark in the drawing because the colors of the specimen are green, white, and black, while the drawing colors are red, white, and black.  Applicant has thus failed to provide the required evidence of use of the mark in commerce.  See TMEP §807.12(a).

 

Applicant may respond to this refusal by satisfying one of the following:

 

(1)        Submit a new color drawing of the mark that shows the mark on the specimen and an amendment of the description and color claim that agrees with the new drawing.  See 37 C.F.R. §2.72(b).  Applicant may amend the mark in the drawing to match the mark on the specimen but may not make any other changes or amendments that would materially alter the drawing of the mark.  See 37 C.F.R. §2.72(a)-(b); TMEP §807.14.  The following color claim and description are suggested, if accurate:

 

Color claim:  “The colors green, white, and black are claimed as a feature of the mark.”

 

Description:  “The mark consists of the following:  a black background with VIZION in the center and in a stylized font. It is in green and white, where the letter Z is in white and the remaining letters are green. The term PRODUCTIONS is also in a stylized font, in white and centered beneath VIZION. All of the wording in the mark is surrounded by a partial rectangular box in white, that is broken apart at the bottom by the term PRODUCTIONS.”

 

(2)        Submit a new black-and-white drawing of the mark and an amendment deleting any color claim and modifying the description to delete any references to color.  The following description is suggested, if accurate:  “The mark consists of the wording VIZION PRODUCTIONS in a stylized font. VIZION is in the center of the mark with the term PRODUCTIONS centered beneath VIZION. All of the wording in the mark is surrounded by a partial rectangular box that is broken apart at the bottom by the term PRODUCTIONS.”  Applicant may amend the mark in the drawing to delete color but may not make any other changes or amendments that would materially alter the mark on the drawing.  See 37 C.F.R. §2.72(a)-(b); TMEP §807.14.

 

(3)        Submit a different specimen (a verified “substitute” specimen) for each applicable international class that (a) shows the mark in the drawing in actual use in commerce in the colors depicted on the drawing and for the goods and/or services in the application or amendment to allege use, and (b) 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.

 

Examples of specimens for goods include tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, and displays associated with the actual goods at their point of sale.  See TMEP §§904.03 et seq.  Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods.  TMEP §904.03(i).  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).

 

For more information about drawings and instructions on how to satisfy these response options online using the Trademark Electronic Application System (TEAS) form, see the Drawing webpage.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

 

Applicant should note the following additional ground for refusal.

 

Refusal to Register – Unacceptable Specimen

 

Registration is refused because the specimen does not show the applied-for mark in use in commerce in International Class(es) 41 and 43.  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, besides the business card, the other specimen submitted are not acceptable specimen to show use of the mark with the services described in the application. The applicant’s equipment, t-shirts, and hats are not acceptable specimen to show use of the mark with the services.

 

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.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.  However, if applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.

 

Inaccurate Disclaimer

 

The applicant was required to disclaim PRODUCTIONS and not VIZION. Therefore, the disclaimer must be amended to disclaim the correct term.

 

Applicant must provide a disclaimer of the unregistrable part(s) of the applied-for mark even though the mark as a whole appears to be registrable.  See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a).  A disclaimer of an unregistrable part of a mark will not affect the mark’s appearance.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965).

 

In this case, applicant must disclaim the wording “PRODUCTIONS” because it is not inherently distinctive.  These unregistrable term(s) at best are merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s services.  See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a). 

 

The attached evidence from ahdictionary.com shows this wording means “something produced; a product.” Thus, the wording merely describes applicant’s services because the applicant is producing lighting, disc jockeying services, and entertainment services, etc. with the services they offer. See the additional definition from merriam-webster.com also attached for this term as further evidence of its descriptive nature when used in the context of the proposed services.

 

Applicant may respond to this issue by submitting a disclaimer in the following format: 

 

No claim is made to the exclusive right to use “PRODUCTIONS” apart from the mark as shown. 

 

For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage. 

 

Unnecessary Claim of Acquired Distinctiveness

 

Applicant claims that the entire applied-for mark has acquired distinctiveness under Trademark Act Section 2(f); however, the mark appears to be inherently distinctive and is eligible for registration on the Principal Register without proof of acquired distinctiveness.  See 15 U.S.C. §1052(f); TMEP §1212.02(d).  As this Section 2(f) claim appears to be unnecessary, applicant has the option to withdraw this claim.  See TMEP §1212.02(d).

 

Applicant may withdraw this claim by instructing the trademark examining attorney to delete it from the application record.  See id.  If applicant does not withdraw the claim, it will remain in the application record and be printed on the registration certificate.  See TMEP §1212.10.

 

A claim of acquired distinctiveness may be construed as a concession by applicant that the entire applied-for mark is not inherently distinctive.  See Cold War Museum, Inc. v. Cold War Air Museum, Inc., 586 F.3d 1352, 1358, 92 USPQ2d 1626, 1629 (Fed. Cir. 2009) (citing Yamaha Int’l Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 1577, 6 USPQ2d 1001, 1005 (Fed. Cir. 1988)); TMEP §1212.02(b).

 

Unnecessary Translation of the term VIZION

 

Applicant’s English translation of VIZION in the application is unnecessary because this term (in its correct spelling) appears in an English dictionary.  TMEP §809.01(b)(i); see 37 C.F.R. §2.32(a)(9).  The USPTO will disregard the translation; it will not be printed on any registration certificate that may issue from this application.  TMEP §809.03.

 

Inaccurate Color Claim and Mark Description

 

If the applicant does not intend to amend the drawing of the mark to match the acceptable specimen submitted (the business card with the wording of the mark in green white), but will instead submit a specimen to match current drawing, then the following amendments to the color claim and mark description are necessary.

 

Although applicant submitted a color drawing with a description referencing colors in the mark, applicant did not provide a list of all the colors claimed as a feature of the mark, known as  a color claim.  Therefore, applicant must provide this required color claim.  37 C.F.R. §2.52(b)(1); see TMEP §§807.07(a) et seq. 

 

The following color claim is suggested, if accurate:  “The colors red, white, and black are claimed as a feature of the mark.”  TMEP §807.07(a)(i).

 

Mark Description Referencing Colors in the Mark

 

Although applicant submitted a drawing showing the mark in color with a color claim, applicant did not provide the required description that specifies where each color appears in the literal and design elements in the mark.  See 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §807.07(a)-(a)(ii).  Therefore, applicant must provide this description.  See TMEP §807.07(a)(ii). 

 

Generic color names must be used to describe the colors in the mark, e.g., red, yellow, blue.  TMEP §807.07(a)(i)-(ii).  If black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark, applicant must so specify in the description.  See TMEP §807.07(d).

 

The following description is suggested, if accurate:  “The mark consists of the following:  a black background with VIZION in the center and in a stylized font. It is in red and white, where the letter Z is in white and the remaining letters are red. The term PRODUCTIONS is also in a stylized font, in white and centered beneath VIZION. All of the wording in the mark is surrounded by a partial rectangular box in white, that is broken apart at the bottom by the term PRODUCTIONS.”

 

Legal Assistance Suggested

 

Because of the legal technicalities and strict deadlines of the trademark application process, applicant may wish to hire a private attorney who specializes in trademark matters to assist in the process.  The assigned trademark examining attorney can provide only limited assistance explaining the content of an Office action and the application process.  USPTO staff cannot provide legal advice or statements about an applicant’s legal rights.  TMEP §§705.02, 709.06.  See Hiring a U.S.-licensed trademark attorney for more information.

 

Contact Information

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

 

 

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 nonfinal Office action  

 

 

Katina J. Joiner

/Katina J. Joiner/

Trademark Examining Attorney

Law Office 104

571-272-8889 (Office)

571-273-8889 (Fax)

katina.jackson@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 October 30, 2019 for

U.S. Trademark Application Serial No. 88267315

 

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. 

 

 

Jackson, Katina

 

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 October 30, 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.”