To: | Wizards of the Coast LLC (sara.beccia@hasbro.com) |
Subject: | U.S. Trademark Application Serial No. 88275197 - N/A |
Sent: | March 17, 2020 03:39:17 PM |
Sent As: | ecom103@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88275197
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Correspondence Address:
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Applicant: Wizards of the Coast LLC
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Reference/Docket No. N/A
Correspondence Email Address: |
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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: March 17, 2020
The statement of use has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
REFUSAL TO REGISTER - DRAWING OF THE MARK DIFFERS FROM DISPLAY ON SPECIMEN OF USE
Registration is refused because the specimen does not show the mark in the drawing in use in commerce in International Class 28, which is required in the statement of 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 large triangular design comprised of three triangles, each with a curved side facing inward, with a circular design in the center containing three bands comprised of curved rectangles. However, the drawing displays the mark as shows a large triangular design comprised of three triangles, each with a curved side facing inward, with a circular design in the center containing a very intricate arrangement of curved and connected rectangular designs. The mark on the specimen does not match the mark in the drawing because the interior is vastly different than the carefully arranged and connected rectangular design of various sizes. Applicant has thus failed to provide the required evidence of use of the mark in commerce. See TMEP §807.12(a).
RESPONSE OPTION for this refusal
Applicant may respond to this refusal by submitting a different specimen (a verified “substitute” specimen) that (a) shows the mark in the drawing in actual use in commerce for the goods and/or services in the statement of use, and (b) was in actual use in commerce prior to the expiration of the deadline for filing the statement of use.
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 web page printout or screenshot submitted as a specimen, whether for goods or services, must include the webpage’s URL and the date it was accessed or printed. 37 C.F.R. §2.56(c).
The USPTO will not accept an amended drawing submitted in response to this refusal because the changes would materially alter the drawing of the mark in the original application or as previously acceptably amended. See 37 C.F.R. §2.72(a)-(b); TMEP §807.14. Specifically, the interior of the circle in the applied-for drawing contains many differently sized curved rectangles that appear connected in various locations, including connecting from one level to the next interior/exterior level, whereas the mark in the specimen lacks these intricacies that serves to create the essence and character of the mark.
In addition, applicant may not respond by withdrawing the statement of use. See 37 C.F.R. §2.88(f); TMEP §1109.17.
For more information about drawings and instructions on how to satisfy this response option using the online Trademark Electronic Application System (TEAS) form, see the Drawing webpage.
Although the examining attorney has refused registration, Applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.
GUIDELINES FOR RESPONDING TO THE OFFICE ACTION
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
How to respond. Click to file a response to this nonfinal Office action.
/VJ/
Gene V.J. Maciol, II
Attorney-advisor
Law Office 103
gene.maciol@uspto.gov
571-273-9280 fx
571-272-9280 ph
RESPONSE GUIDANCE