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:  July 29, 2019

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on July 8, 2019.

 

In a previous Office action dated April 15, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following:  failure to show the applied-for mark in use in commerce with any of the specified goods.  In addition, applicant was required to satisfy the following requirements:  provide information about where the goods come from or originate; provide information about specimen submitted. 

 

The trademark examining attorney maintains and now makes FINAL the refusals and requirements 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:

• Request for Information – Requirement
• Specimen – Refusal
• Information About Specimen – Requirement

 

REQUEST FOR INFORMATION – REQUIREMENT

 

Applicant was required to provide additional information regarding the specified goods to enable proper examination of the application.  However, applicant did not submit the requested information in applicant’s response.  “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).

 

Under 37 C.F.R. §2.61(b), an examining attorney “may require the applicant to furnish such information and exhibits as may be reasonably necessary to the proper examination of the application.”  Under this rule, an examining attorney may request literature, exhibits, and general information concerning applicant’s goods and/or services, circumstances surrounding applicant’s applied-for mark, and, if applicable, the use or intended use of applicant’s applied-for mark.  See TMEP §814.

 

Therefore, applicant must provide a written statement specifying where the goods come from or originate.  See 37 C.F.R. §2.61(b); TMEP §§814, 1210.03. 

 

If an applicant has access to the requested information, the applicant must make this information of record.  In re Planalytics, Inc., 70 USPQ2d 1453, 1457 (TTAB 2004).  If an applicant does not have access to the requested information, the applicant should submit a statement to that effect.  In re Planalytics, Inc., 70 USPQ2d at 1457 n.2.  If the requested information is confidential, or if, applicant prefers, for a valid reason, that such information not appear in the publicly-available application record, the applicant may redact such text or, for confidential information, provide a written explanation or summary.  TMEP §814.

 

SPECIMEN – REFUSAL

 

Applicant was previously refused registration in International Class 11 because the specimen consisted of a digitally altered image or a mock-up of the goods.  Response options for overcoming that refusal, if any, were set forth in the prior Office action.  Applicant, however, responded to such refusal by submitting a substitute specimen for each refused international class that does not show proper use of the applied-for mark in commerce for the reasons immediately stated below.  Thus, the refusal to register the applied-for mark in International Class 11 is now made final because applicant failed to provide evidence of use of the mark in commerce.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a), 2.63(b); TMEP §§904, 904.07, 1301.04(g)(i). 

 

Registration is refused because the specimen in International Class 11 appears to consist of a digitally altered image or a mock-up of the mark on the goods or their packaging and does not show the applied-for mark in actual use in commerce.  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). 

 

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 goods 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).  “Use in commerce” means (1) a bona fide use of the applied-for mark in the ordinary course of trade (and not merely to reserve a right in the mark), (2) the mark is placed in any manner on the goods, packaging, tags or labels affixed to the goods, or displays that directly associate the mark with the goods and have a point-of-sale nature, and (3) the goods are actually sold or transported in commerce.  See 15 U.S.C. §1127.

 

An image of a product or packaging that has been digitally created or otherwise altered to include the mark does not show actual use of the mark in commerce.  See 15 U.S.C. §1127; TMEP §§904.04(a), 904.07(a); cf. In re Chica, Inc., 84 USPQ2d 1845, 1848 (TTAB 2007) (holding that “a mere drawing of the goods with an illustration of how the mark may be displayed” was not an acceptable specimen because it did not show actual use in commerce); In re The Signal Cos., 228 USPQ 956, 957-58 n.4 (TTAB 1986) (noting that a printer’s proof of an advertisement would not be an acceptable specimen because it does not show actual use in commerce).

 

In this case, the original specimen submitted showed the applied-for mark on heavily used, scratched, or otherwise stained products that would not appear on products used in commerce.  In its response, applicant submitted a substitute specimen again demonstrating the mark on scratched and used light bulbs, which again fails to show the applied-for mark as they would appear in commerce.  Applicant also submitted in its response a product page from Amazon.com that appears to show the same image of a light bulb submitted as the specimen.  However, the description of the product does not match the product listed, in that textual description appears to be for leather travel bag, whereas the photograph of the product shows a light bulb.  Moreover, the pricing listed for the light bulb does not appear comparable to similar light bulbs; applicant’s specimen shows a price of $116.99 for a single bulb, whereas the attached evidence shows that similar bulbs in a 32-pack are priced at $37.39, a 6-pack are priced at $9.99, and a 4-pack are priced at $8.39.  Therefore, the submitted substitute specimen also constitutes a digitally altered image or otherwise a mock-up of the goods and cannot be accepted.

 

Response options.  Applicant may respond to the refusal of registration due to the specimen’s failure to show actual use in commerce by amending the filing basis to allege intent to use the mark in commerce, for which no specimen is required now.  See 37 C.F.R. §2.34.  This option will later necessitate additional fee(s) and filing requirements such as providing a specimen. 

 

Alternatively, applicant may also respond to the refusal by submitting 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 goods 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. 

 

For an overview of these response options and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, see the Specimen webpage.

 

If applicant submits a verified substitute specimen, applicant must also fully respond to all the requirements for information and documentation.  Failure to comply with a requirement to furnish information is grounds for refusing registration.  In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.  Merely stating that evidence is available on applicant’s or a third party website or providing a hyperlink of such a website is an insufficient response and will not make the additional information or materials of record.  See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).  However, amending the application filing basis to intent-to-use under Section 1(b) will resolve the requirements for information and documentation.

 

INFORMATION ABOUT SPECIMEN – REQUIREMENT

 

Applicant was required to provide additional information regarding the specimens submitted to enable proper examination of the application.  However, applicant did not submit the requested information in applicant’s response.  “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).

 

Under 37 C.F.R. §2.61(b), an examining attorney “may require the applicant to furnish such information and exhibits as may be reasonably necessary to the proper examination of the application.”  Under this rule, an examining attorney may request literature, exhibits, and general information concerning applicant’s goods and/or services, circumstances surrounding applicant’s applied-for mark, and, if applicable, the use or intended use of applicant’s applied-for mark.  See TMEP §814.

 

Therefore, applicant must provide the following information:

 

(1)       How are applicant’s goods sold?  Specify the retail, wholesale, or other sales environment in which the goods are sold.

 

(2)       Please provide copies of invoices, bills of sale, or other documentation of sales of the goods.

 

(3)       Was the specimen created for submission with this application?

 

(4)       Does the specimen show applicant’s product as it is currently being sold to consumers?

 

(5)       How do applicant’s goods appear in the actual sales environment?  If sold in stores, provide photos showing the goods for sale in the stores.  If sold online, identify the websites and provide copies of the webpages showing the goods for sale.  And if sold in another type of sales environment, provide photos and/or documentation showing the goods for sale in that environment.

 

(6)       If the information in question (5) about how the goods appear in the actual sales environment is not available to applicant, then please describe how applicant’s goods are transported for sale and provide photos and other documentation showing how applicant’s mark appears on the goods and/or its packaging when the goods are being transported for sale.

 

See 37 C.F.R. §2.61(b); TMEP §814.  

 

If an applicant has access to the requested information, the applicant must make this information of record.  In re Planalytics, Inc., 70 USPQ2d 1453, 1457 (TTAB 2004).  If an applicant does not have access to the requested information, the applicant should submit a statement to that effect.  In re Planalytics, Inc., 70 USPQ2d at 1457 n.2.  If the requested information is confidential, or if, applicant prefers, for a valid reason, that such information not appear in the publicly-available application record, the applicant may redact such text or, for confidential information, provide a written explanation or summary.  TMEP §814.

 

RESPONSE GUIDELINES

 

Applicant must respond within six months of the date of issuance of this final Office action or the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond by providing one or both of the following:

 

(1)       a response filed using the Trademark Electronic Application System (TEAS) that fully satisfies all outstanding requirements and/or resolves all outstanding refusals; and/or

 

(2)       an appeal to the Trademark Trial and Appeal Board filed using the Electronic System for Trademark Trials and Appeals (ESTTA) with the required filing fee of $200 per class.

 

37 C.F.R. §2.63(b)(1)-(2); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.

 

In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues.  TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters).  There is a fee required for filing a petition.  37 C.F.R. §2.6(a)(15).

 

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).

 

 

Young Wolfe

/Young Wolfe/

Trademark Examining Attorney

Law Office 122

Phone: (571) 272-5579

young.wolfe@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 July 29, 2019 for

U.S. Trademark Application Serial No. 88280088

 

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. 

 

 

Young Wolfe

/Young Wolfe/

Trademark Examining Attorney

Law Office 122

Phone: (571) 272-5579

young.wolfe@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 July 29, 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.”