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:  April 28, 2020

 

This application was filed with the USPTO on January 28, 2019.  Following the issuance of a Notice of Allowance, applicant timely filed a Statement of Use on April 10, 2020.  Because the specimens of use give rise to new issues with the application, the following refusals are now added.

 

 

Refusal: Mark Fails to Function as a Service Mark

 

Registration is refused because the applied-for mark, as used on the specimens of record, merely identifies a process or system; it does not function as a service mark to indicate the source of applicant’s services and to identify and distinguish them from others.  Trademark Act Sections 1, 2, 3, and 45, 15 U.S.C. §§1051-1053, 1127; see In re HSB Solomon Assocs., LLC, 102 USPQ2d 1269, 1270 (TTAB 2012) (citing In re Universal Oil Prods. Co., 476 F.2d 653, 655-56, 177 USPQ 456, 457 (C.C.P.A. 1973); TMEP §1301.02(e)).

 

A process or system is only a way of doing something, and is not generally a service.  TMEP §1301.02(e).  An applied-for mark that identifies only a process, style, method, or system is therefore not registrable as a service mark.  In re HSB Solomon Assocs., LLC, 102 USPQ2d at 1270; In re Hughes Aircraft Co., 222 USPQ 263, 264 (TTAB 1984). 

 

Whether a designation functions as a mark depends on the commercial impression it makes on the relevant public; that is, whether purchasers would likely regard it as a source-indicator for the services.  See In re Keep A Breast Found., 123 USPQ2d 1869, 1879 (TTAB 2017) (quoting In re Eagle Crest Inc., 96 USPQ2d 1227, 1229 (TTAB 2010)); TMEP §1202.  The specimen and any other relevant evidence of use is reviewed to determine whether an applied-for mark is being used as a service mark.  In re Bose Corp., 546 F.2d 893, 897, 192 USPQ 213, 216 (C.C.P.A. 1976); In re Volvo Cars of N. Am., Inc., 46 USPQ2d 1455, 1459 (TTAB 1998).  A specimen showing the applied-for mark referring solely to a process or system, and not to applicant’s services, is evidence that the relevant public would not regard the designation as a service mark.  See In re Universal Oil Prods. Co., 476 F.2d at 655-56, 177 USPQ at 457.

 

In this case, the specimens show the applied-for mark used solely to identify a process or system because the specimens refer to an altered version of the mark, VELUTINE EVO, only as a “finishing technology” for fabrics that is provided by applicant, Asahi Kasei, to an entity identified as Bemberg.  The specimens provide no indication that VELUTINE, either alone or as part of the mark VELUTINE EVO, identifies the source of a service in commerce.  The mark therefore must be refused for failure to function as a service mark. 

 

Response option.  Applicant may respond to this refusal by submitting 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 proper service mark use for the services 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.

 

Examples of specimens.  Specimens for services must show a direct association between the mark and the services and include:  (1) copies of advertising and marketing material, (2) a photograph of business signage or billboards, or (3) materials showing the mark in the sale, rendering, or advertising of the services.  See 37 C.F.R. §2.56(b)(2), (c); TMEP §1301.04(a), (h)(iv)(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).

 

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

 

For more information about 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.

 

 

Refusal: Mark in Drawing Does Not Match Mark on Specimens

 

Registration is refused because the specimen does not show the mark in the drawing in use in commerce, 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 VELUTINE EVO.  However, the drawing displays the mark as VELUTINE.  The mark on the specimen does not match the mark in the drawing because the two words are consistently presented together, in the same size, font, and color, indicating that they are one mark.  Applicant has thus failed to provide the required evidence of use of the mark in commerce.  See TMEP §807.12(a).

 

Response option.  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 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 services must show a direct association between the mark and the services and include:  (1) copies of advertising and marketing material, (2) a photograph of business signage or billboards, or (3) materials showing the mark in the sale, rendering, or advertising of the services.  See 37 C.F.R. §2.56(b)(1), (c); TMEP §1301.04(a), (h)(iv)(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.  See 37 C.F.R. §2.72(a)-(b); TMEP §807.14.  Specifically, because VELUTINE and EVO both appear to be arbitrary terms for fabric-treatment services, and because the specimens only show them appearing together, in the same font and size, they create the impression of being a single two-word mark. 

 

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.

 

How to respond.  Click to file a response to this nonfinal Office action.    

 

 

/Rebecca M. Eisinger/

Staff Attorney, Law Office 100

United States Patent & Trademark Office

Informal inquiries: rebecca.eisinger@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 April 28, 2020 for

U.S. Trademark Application Serial No. 88279628

 

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. 

 

 

/Rebecca M. Eisinger/

Staff Attorney, Law Office 100

United States Patent & Trademark Office

Informal inquiries: rebecca.eisinger@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 April 28, 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.”