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 09, 2019

 

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on June 13, 2019.

 

The Office has reassigned this application to the undersigned trademark examining attorney.

 

In a previous Office action(s) dated April 23, 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 and failure to show the applied-for mark in use in commerce due to a digitally altered and/or mockup specimen.  In addition, applicant was required to satisfy the following requirement(s):  amend the identification of goods and/or services and provide information about the specimen.

 

Based on applicant’s response, the trademark examining attorney notes that the following requirement(s) have been satisfied: definite amended identification provided.  See TMEP §§713.02, 714.04. 

 

In addition, the following refusal(s) and/or requirement(s) have been withdrawn:  failure to show the applied-for mark in use in commerce with any of the specified goods.  See TMEP §§713.02, 714.04. 

 

Further, the trademark examining attorney maintains and now makes FINAL the refusal(s) and/or requirement(s) 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:

 

• Refusal – Specimen Digitally Altered
• Requirement -  Information About Specimen Required

 

 

REFUSAL – SPECIMEN – DIGITALLY ALTERED OR MOCK-UP

 

Registration is refused because the specimen in International Class 21 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 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 addition, a photo of the mark on a label, tag, or piece of paper that appears on applicant’s or a third party’s goods or packaging 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), 904.07(a).  Applicant must show the mark on applicant’s own goods or packaging as it is seen by the purchasing public, with goods that have actually been sold or transported in commerce.  See TMEP §904.07(a).

 

In this case, the first page of the specimen appears to consist of a hand-operated coffee grinder with the mark on it.  However, the mark appears to hover above the image and curves upward on the right side in a way that is inconsistent with the curve of the good.  The second page of the specimen appears to be the image of a vacuum bottle with the mark on it.  However, the mark appears pixelated, hovers over the image and the mark curves at the right in an upward motion that is inconsistent with the curve of the good.  Lastly, the third page is a screenshot of an amazon posting of a kitchen crusher but the mark, as filed, does not appear on the posting.

 

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 and/or 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).  “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, or displays of the goods, and (3) the goods are actually sold or transported in commerce.  See 15 U.S.C. §1127.

 

In addition to the examples of specimens in (2) in the above paragraph, examples of specimens for goods also include instruction manuals, containers, and webpages that include a picture or textual description of the goods associated with the mark and the means to order the goods.  See TMEP §§904.03 et seq. 

 

Applicant may respond to this 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 and/or services 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 filing requirements such as providing a specimen.

 

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, see the Specimen webpage.

 

Considering the above, because the record does not contain a specimen showing the mark in use in commerce for International Classes 21, the refusal is now made FINAL. 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).

 

 

REQUIREMENT – INFORMATION ABOUT SPECIMEN REQUIRED

 

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 specimen of record appears to be digitally created or altered, or is otherwise a mock-up, it does 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.

 

Applicant should note that it did not respond to this requirement in its Response to Office action dated June 13, 2019.

 

Accordingly, applicant must respond to the following questions and requests for documentation to satisfy this request for 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.  

 

Failure to comply with a request for information is grounds for refusing registration.  In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.  Merely stating that information is available on applicant’s website is an insufficient response and will not make the relevant information of record.  See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).

 

Considering the above, because the request for information about specimen requirement has not been met, this requirement is made FINAL. See 37 C.F.R. §2.61(b); 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).

 

 

Assistance

 

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(s) and/or requirement(s) 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 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).

 

 

Solano, Carlita

/Carlita Jaye Solano/

Examining Attorney

Law Office 128

(571)270-0348

carlita.solano@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 09, 2019 for

U.S. Trademark Application Serial No. 88285233

 

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. 

 

 

Solano, Carlita

/Carlita Jaye Solano/

Examining Attorney

Law Office 128

(571)270-0348

carlita.solano@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 09, 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.”