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:  October 15, 2019

 

 

Introduction

 

This Office action is in response to applicant’s communication filed on October 11, 2019.

 

In a previous Office action dated April 12, 2019, the trademark examining attorney refused registration of the applied-for mark based on Trademark Act Sections 1 and 45 for failure to show the applied-for mark in use in commerce with any of the specified goods.  In addition, applicant was required to provide information about the specimen.

 

The requirement to provide additional information has been obviated.  See TMEP §§715.03(a)(ii)(B), 715.04(a).

 

The trademark examining attorney maintains and now makes FINAL the Sections 1 and 45 refusal.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

Specimen Refused

 

The refusal to register the applied-for mark in International Class 5 is now made final because the record does not contain a specimen showing the mark in 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), 2.63(b); TMEP §§904, 904.07(a). 

 

Applicant was previously refused registration in International Class 5 because the original specimen appeared to consist of a digitally altered image or a mock-up of the intended depiction of the mark on the goods or their packaging for future use in commerce.  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). 

 

In response to the refused international class, applicant conceded that the specimen was created for submission with this application.  Specifically, applicant stated that the specimen was generated so as to preclude proteted patient health information that normally included on the labeling of applicant’s goods.  Further, applicant argued that the specimen of record is acceptable because applicant cannot lawfully provide a specimen showing actual use of the applied-for mark in commerce because a specimen which shows actual use of the mark in association with the applicant’s goods would comprise protected patient health information. 

 

If, for a valid reason, the applicant does not want certain information to become part of a public record, the applicant should consider options such as redacting confidential portions of documents prior to their submission.  TMEP §404.  However, merely stating that a specimen showing actual use of the applied-for mark in commerce cannot be provided because the applicant’s labels contain protected patient health information does not obviate the requirement to provide a specimen showing the mark in use in commerce with the identified goods.  Thus, applicant’s argument that the specimen of record is acceptable is unpersuasive.

 

Actual “use in commerce” occurs when the mark is placed on the goods or their containers in the ordinary course of trade and the goods are actually sold or transported, and not merely to reserve a right in the mark.  See 15 U.S.C. §1127; TMEP §901.01.

 

A digitally altered image, mock-up, or photograph of an intended depiction of a mark on a label, tag, or piece of paper placed on top of an applicant’s or a third party’s goods or packaging merely for the purposes of filing a trademark application is generally not acceptable to show applicant’s use of the applied-for mark in commerce.  See 15 U.S.C. §1127; TMEP §§904.03(a), 904.04(a), 904.07(a); cf. In re Chica, Inc., 84 USPQ2d 1845, 1848 (TTAB 2007); In re The Signal Cos., 228 USPQ 956, 957-58 n.4 (TTAB 1986).  Applicant must show the mark used on applicant’s goods or packaging as it is seen by the purchasing public, with goods that are sold or transported in commerce that is regulated by the U.S. Congress.  See 15 U.S.C. §1127; TMEP §901.01. 

 

Applicant may respond to this final 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 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.

 

(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 the filing of an acceptable specimen when actual use of the mark in the sale or transport of goods occurs.

 

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 the Specimen webpage.

 

Conclusion 

 

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 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.  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)

 

 

/Joshua S. Toy/

Trademark Examining Attorney

Law Office 120

571-272-4856

joshua.toy@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 15, 2019 for

U.S. Trademark Application Serial No. 88283151

 

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. 

 

 

/Joshua S. Toy/

Trademark Examining Attorney

Law Office 120

571-272-4856

joshua.toy@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 October 15, 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.”