UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.  A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.

 

ISSUE/MAILING DATE: 5/6/2019

 

THIS IS A FINAL ACTION.

 

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.  

 

INTRODUCTION

 

Applicant’s response of April 16, 2019, to the office action of April 13, 2019, has been reviewed and the following determinations have been made.

 

The specimen refusal is made FINAL.  The refusal because the mark differs on drawing and specimen is also made FINAL.

 

 

Summary of Issues: (*) Indicates Issues Applicant Must Address:

 

• Specimen – FINAL
• Mark Differs on Drawing & Specimen – Material - FINAL

 

FINAL REFUSAL - SPECIMEN UNACCEPTABLE

Applicant was previously refused registration in International Class(es) 42 because none of the specimens submitted show the applied-for mark used in connection with the identified services.  Response options for overcoming that refusal, if any, were set forth in the prior Office action.  Applicant, however, responded to such refusal by submitting substitute specimen(s) that do 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(es) 42 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). 

Here, applicant has applied to register the proposed mark in connection with “[s]cientific research consulting in the field of cosmetics.” The original specimens which were described as a “brochure/poster” were refused because there was no indication from the specimens that applicant is providing “scientific research consulting” or any type of consulting service.   Specimens consisting of advertising or promotional materials must show a direct association between the mark and the services for which registration is sought.  In re WAY Media, Inc., 118 USPQ2d 1697, 1698 (TTAB 2016) (quoting In re Universal Oil Prods. Co., 476 F.2d 653, 655, 177 USPQ 456, 457 (C.C.P.A. 1973)); TMEP §1301.04(f)(ii).  To show this direct association, the specimen must contain an explicit reference to the services, in addition to the mark being used on the specimen to identify the service and its source.  In re WAY Media, Inc., 118 USPQ2d at 1698 (quoting In re Osmotica Holdings, Corp., 95 USPQ2d 1666, 1668 (TTAB 2010)); TMEP §1301.04(f)(ii).  While the exact nature of the services does not need to be specified in the specimen, there must be something which creates in the mind of the purchaser an association between the mark and the service.  In re Adair, 45 USPQ2d 1211, 1215 (TTAB 1997) (quoting In re Johnson Controls Inc., 33 USPQ2d 1318, 1320 (TTAB 1994)). 

The purpose of the specimen is to show how applicant is using the applied-for mark in connection with the identified services, for example, in the sale or advertising of the services.  In the present case, applicant has applied to register the proposed mark in connection with scientific research consulting in the field of cosmetics.  Therefore, applicant must show the applied-for mark used in connection with applicant’s “scientific research consulting” services, for example, in the advertising of said scientific research consulting services.  In this case, however, none of the specimens or substitute specimens show that applicant uses the applied-for mark to identify its scientific research consulting services.

In applicant’s response filed on April 16, 2019, applicant submitted three (3) substitute specimens, none of which show the applied-for mark used in connection with scientific research consulting in the field of cosmetics.  The first substitute specimen is described as “a screen shot of the mark on a third party commercial website” shows an advertisement for applicant’s “alkane-based materials for personal care” and uses a version of the applied-for mark in connection with an “elastomer series”.  This first substitute specimen is unacceptable because it does not show the applied-for mark used in the sale or advertising of “scientific research consulting” services.  Rather, the specimen appears to be an advertisement for chemical materials, i.e., “volatile to non-volatile alkane fluids,” for use in the manufacture of cosmetics.  

The second substitute specimen described as “a poster/signage on the side of a building,” likewise fails to show that the applied-for mark is used in connection with scientific research consulting in the field of cosmetics. Here too, the poster/sign makes reference to applicant’s product line of “alkane based elastomer[s]” rather than “scientific research consulting.

The third substitute specimen described as “a close up photo of the mark in question” (appears to be a portion of a previously submitted specimen) also fails to show the applied-for mark in use in commerce in connection with the identified services, i.e., scientific research consulting in the field of, because there is no direct association between the mark and the services for which registration is sought.

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 services 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).  Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and webpages that show the mark used in the actual sale, rendering, or advertising of the services.  See TMEP §1301.04(a), (h)(iv)(C).  Specimens comprising advertising and promotional materials must show a direct association between the mark and the services.  TMEP §1301.04(f)(ii).

Accordingly, the refusal is continued and made FINAL.

 

FINAL REFUSAL - MARK DIFFERS ON DRAWING & SPECIMEN – MATERIAL

 

This is separate refusal from the specimen refusal above.

 

In the previous office action, registration was refused because the specimen does not show the mark in the drawing in use in commerce in International Class(es) 42, which is required in the application or amendment to allege 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).  In response to this refusal, applicant has provided a substitute drawing and substitute specimens, none of which are acceptable to overcome the refusal.  Accordingly, the refusal is made FINAL.

 

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 drawing displays the mark as a single compound term SiAPP which creates a unitary impression.  The original specimen(s), however, show the mark as “Si APP” with additional elements around the letters “Si” including a rectangular outline, the number 14 (which appears as superscript), the term “silicon” and the numbers “28.086”.  All these elements create a unitary impression with the letters Si because they all relate to the element silicon as it appears in the period table of elements.  Applicant has thus failed to provide the required evidence of use of the mark in commerce.  See TMEP §807.12(a).

 

In response to this refusal, applicant submitted a substitute drawing which is a material alteration of the original specimen because it contains additional elements that would require a new search and also because it is not a clear depiction of the mark.  37 C.F.R. §§2.53(c), 2.54(e); TMEP §§807.05(c), 807.06(a).  Specifically, applicant appears to have cropped a portion of a specimen and submitted it as a substitute drawing.  The substitute drawing includes the following wording “ducing 14 Si Silicon 28.086 App^tm paralleled skin safety, versatility, of silicones in personal care app” in addition to being in color and containing various design element including a horizontal line, a rectangle and a portion of a geometric shape.  The USPTO cannot accept an amendment to a mark if it will materially alter the mark in the drawing filed with the original application, or in a previously accepted amended drawing.  37 C.F.R. §2.72(a)(2), (b)(2); TMEP §807.14.  An amendment to the mark is material when the USPTO would need to republish the mark with the change in the USPTO Trademark Official Gazette to fairly present the mark to the public.  In re Thrifty, Inc., 274 F.3d 1349, 1352, 61 USPQ2d 1121, 1123-24 (Fed. Cir. 2001) (citing In re Hacot-Columbier, 105 F.3d 616, 620, 41 USPQ2d 1523, 1526 (Fed. Cir. 1997)); TMEP §807.14.  Accordingly, the proposed drawing amendment will not be entered and the previous drawing of the mark will remain operative.  

 

Since the substitute drawing is not acceptable, the original drawing remains operative and differs materially not only from the originally submitted specimens but also from the each of the substitute specimens which show the applied for mark with all of the additional elements that were the subject of the original refusal, i.e., the rectangular outline surrounding the letters “Si”, the number 14 (which appears as superscript), the term “silicon” and the numbers “28.086” which all appear as a unitary element.

Accordingly, the refusal is continued and made FINAL.

 

PROPER RESPONSE TO A FINAL ACTION

 

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).

 

 

 

/Deborah Lobo/

Trademark Examining Attorney

Law Office 109

(571) 272-3263

deborah.lobo@uspto.gov

 

TO RESPOND TO THIS LETTER:  Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application.  For technical assistance with online forms, e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned trademark examining attorney.  E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

 

All informal e-mail communications relevant to this application will be placed in the official application record.

 

WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants).  If an applicant is represented by an attorney, the attorney must sign the response. 

 

PERIODICALLY CHECK THE STATUS OF THE APPLICATION:  To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/.  Please keep a copy of the TSDR status screen.  If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199.  For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

 

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 5/6/2019 FOR U.S. APPLICATION SERIAL NO. 88283656

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 5/6/2019 (or sooner if specified in the Office action).  A response transmitted through the Trademark Electronic Application System (TEAS) must be received before midnight Eastern Time of the last day of the response period.  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the TEAS response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.