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:  August 20, 2019

 

 

 

This letter responds to Applicant’s communication filed July 16, 2019. 

 

In the previous Office action dated April 15, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following:

 

• Failure to Function - Specimen Unacceptable - Does Not Appear to Show Actual Use in Commerce

 

In addition, Applicant was required to satisfy the following information requirement:

 

• Information about Specimen Required

 

Applicant’s response obviates the following refusal:

 

• Failure to Function - Specimen Unacceptable - Does Not Appear to Show Actual Use in Commerce

 

See TMEP §§713.02, 714.04. 

 

However, the following requirement is maintained and made FINAL:

 

• Information about Specimen Required

 

See 37 C.F.R. §2.63(b); TMEP §714.04.

 

 

INFORMATION ABOUT SPECIMEN – FINAL

 

Applicant was previously required to provide information about the specimen.  Applicant did not respond, or failed to respond completely, to this requirement, therefore, this requirement is continued and now made Final.

 

A specimen must show the mark as used in commerce, which means use in the ordinary course of trade (not merely to reserve a right in the mark).  15 U.S.C. §§1051, 1052, 1127.  A specimen shows a mark used in commerce for goods only if it shows the mark placed on the goods, packaging, tags or labels affixed to the goods, or displays of the goods, and the goods are actually sold or transported for sale in commerce.  15 U.S.C. §1127. 

 

Because the previously submitted specimen appeared to be digitally created or altered, or was otherwise a mock-up, it did not appear to show the mark as actually used in commerce.  Therefore, to permit proper examination of the application, Applicant must submit additional information for the record about the specimen and how the mark as shown in the specimen is in use in commerce with Applicant’s goods.  See 37 C.F.R. §2.61(b); TMEP §814.

 

Answer for each specimen/photograph/image previously provided.  For any website source submitted as supporting evidence, provide a digital copy of the entire webpage from top to bottom, as rendered in an Internet browser that includes the URL and access or print date.  TMEP §710.01(b) (citing In re I-Coat Co., 126 USPQ2d 1730, 1733 (TTAB 2018)).

 

(1)    Identify the particular good(s) listed in the application for which the specimen(s) was submitted to show use of the mark.

 

(2)    Was the specimen created for submission with this application?  If so, specify the date each specimen was created.  If applicant obtained the image(s) of the goods shown in the specimen(s) from a third-party website, provide the URL of the website and a digital copy of relevant webpage(s) for each image.

 

(3)    Provide information about and examples of how applicant’s goods appear in the actual sales environment.

 

(a)   If sold in stores, provide a representative sample of the name(s) of the stores and of photographs showing the goods for sale in the named stores, such as photographs of the sales displays or goods on shelves with the mark.

(b)   If sold online, provide a representative sample of the name(s) of the online retailers, the website URL(s) for each named retailer, and a digital copy of the webpages showing the goods for sale on the named website.

(c)   If sold in another type of sales environment (e.g., catalogs, trade shows), identify the environment and provide photographs and/or documentation showing the goods for sale in that environment.

 

(4)    If the information in question (3) about how the goods appear in the actual sales environment is not available to applicant, please describe how applicant’s goods are sold or transported and provide photographs and other documentation showing how applicant’s mark appears on the goods and/or its packaging when the goods are sold or transported to or within the United States.

 

(5)    For each category of sales environment specified in response to questions (3) and (4), specify when the goods bearing the mark were first available for purchase within the United States, the date of the first sale of the goods to or within the United States, and whether the goods are still for sale to or within the United States in that environment.

 

(6)    For the goods identified in response to question (1), specify the dollar amount of sales with or within the United States and provide at least three invoices or other supporting documentation that show payments or other consideration made, redacting personal or private information of buyers as necessary.

 

“The Trademark Rules of Practice have the effect of law and failure to comply with a request for information is grounds for refusal of registration.”  In re Page, 51 USPQ2d 1660, 1665 (TTAB 1999) (citing In re Babies Beat Inc., 13 USPQ2d 1729, 1731 (TTAB 1990)).  Thus, the requirement for additional information is maintained and made Final.  37 C.F.R. §§2.61(b), 2.63(b).

 

 

PROPER RESPONSE TO FINAL ACTION

 

An applicant must respond to a final action within six months of the issuance date.  15 U.S.C. §1062(b); 37 C.F.R. §2.62(a).

 

An applicant may respond to a final action by timely filing (1) a notice of appeal to the Trademark Trial and Appeal Board (see TMEP §§1501–1501.07); (2) a request for reconsideration that seeks to overcome any substantive refusals to register and comply with any outstanding requirements; or (3) a petition to the Director under Trademark Rule 2.146 to review a requirement, if the subject matter of the requirement is procedural and thus appropriate for petition. 37 C.F.R. §2.63(b)(1)-(2). Filing a request for reconsideration does not stay or extend the deadline for filing a notice of appeal or petition to the Director under 37 C.F.R. §2.63(b)(2). 37 C.F.R. §2.63(b)(3); TMEP §715.03.

 

See TMEP §715.01.

 

 

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).

 

 

/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

• 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 20, 2019 for

U.S. Trademark Application Serial No. 88276263

 

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. 

 

 

/VJ/

Gene V.J. Maciol, II

Attorney-advisor

Law Office 103

gene.maciol@uspto.gov

571-273-9280 fx

571-272-9280 ph

 

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 20, 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.”