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 07, 2020

 

This Office Action is in response to applicant’s communication filed on June 11, 2020.

 

INTRODUCTION

 

For the reasons set forth below, the following refusal is now made FINAL:

 

1. Specimen Refusal – Premature Use – FINAL Refusal

 

See 37 C.F.R. §2.63(b); 2.88(a)(2)(i); TMEP §§904, 1301.03(a).

 

SPECIMEN REFUSAL – PREMATURE USE – FINAL REFUSAL

 

Registration was refused because the specimen shows that applicant had not used the applied-for mark in commerce in connection with the identified services before the expiration of the deadline for filing the statement of use.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §2.88(a)(2)(i), (b)(1)(ii); see TMEP §§904, 1301.03(a).

 

The use or display of a mark in the sale or advertising of services before the services are rendered does not show use in commerce.  See Couture v. Playdom, Inc., 778 F.3d 1379, 1380-82, 113 USPQ2d 2042, 2043-44 (Fed. Cir. 2015); In re Cedar Point, Inc., 220 USPQ 533 (TTAB 1983); TMEP §§904, 1301.03(a).

 

In the Office Action issued on December 16, 2019, applicant was advised that the specimen shows that applicant’s services would not have rendered until May 16-17, 2020.  See specimen filed on December 5, 2019.

 

Further, applicant was advised that if applicant’s services were being rendered in commerce before expiration of the deadline for filing a statement of use, applicant must submit the following:

 

(1)        A substitute specimen showing the applied-for mark in use in commerce for the services specified in the statement of use.

 

(2)        The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “The substitute specimen was in use in commerce before the expiration of the deadline for filing the statement of use.”  37 C.F.R. §2.59(b)(2); TMEP §904.05; see 37 C.F.R. §2.193(e)(1).  If submitting a substitute specimen requires an amendment to the dates of use, applicant must also verify the amended dates.  37 C.F.R. §2.71(c); TMEP §904.05.

 

Finally, applicant was advised that if applicant did not use the applied-for mark in commerce within the time permitted for filing a statement of use, the application will be abandoned.  See 37 C.F.R. §2.88(k); TMEP §1109.16(a).

 

In applicant’s Response to Office Action filed on June 11, 2020, applicant failed to respond to the refusal, as applicant did not provide a verified substitute specimen and the respective verified statement.

 

Therefore, for the reasons outlined above, the specimen refusal for premature use is maintained and now made FINAL.

 

However, applicant may still respond to this FINAL refusal by submitting a substitute specimen and verified statement, as outlined above.

 

How to respond.  Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).

 

 

 

/Adetayo J. Adeyiga/

Trademark Examining Attorney

Law Office 114

(571) 272-7089

adetayo.adeyiga@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 07, 2020 for

U.S. Trademark Application Serial No. 88286812

 

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. 

 

 

/Adetayo J. Adeyiga/

Trademark Examining Attorney

Law Office 114

(571) 272-7089

adetayo.adeyiga@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 07, 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.”