To: | Viking Products Group, Inc. (uspto@faysharpe.com) |
Subject: | U.S. Trademark Application Serial No. 88292559 - V - GARL500480US |
Sent: | August 24, 2020 11:23:17 AM |
Sent As: | ecom130@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88292559
Mark: V
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Correspondence Address:
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Applicant: Viking Products Group, Inc.
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Reference/Docket No. GARL500480US
Correspondence Email Address: |
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NONFINAL 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). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: August 24, 2020
INTRODUCTION
The assigned trademark examining attorney has reviewed the statement of use. Applicant must respond timely and completely to the issue below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
REFUSAL – SECTIONS 1 AND 45 MARK DIFFERS ON SPECIMEN AND DRAWING
THIS PARTIAL REFUSAL APPLIES TO CLASSES 1, 2 AND 6 ONLY
Registration is refused because the specimen does not show the mark in the drawing in use in commerce in International Classes 1, 2 and 6, which is required in the statement of 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). 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).
The mark on the specimen and in the drawing do not match because the mark on the drawing is only a portion of the mark appearing on the specimen.
A portion of a mark may be registered only “if that portion presents a separate and distinct commercial impression.” In re Lorillard Licensing Co., 99 USPQ2d 1312, 1316 (TTAB 2011) (citing In re 1175854 Ontario Ltd., 81 USPQ2d 1446, 1448 (TTAB 2006)). In this case, the drawing shows only a nonseparable part of the mark appearing on the specimen. See In re Chem. Dynamics Inc., 839 F.2d 1569, 1571, 5 USPQ2d 1828, 1829-30 (Fed. Cir. 1988); In re Guitar Straps Online LLC, 103 USPQ2d 1745, 1751 (TTAB 2012); TMEP §807.12(a), (d). Specifically, the stylized letter "V" shown in the drawing is an essential and nonseparable part of the stylized word-mark "VIKING" in the specimen. Applicant has thus failed to provide the required evidence of use of the mark in commerce. See TMEP §807.12(a).
Response options. Applicant may respond to this refusal by submitting a different specimen (a verified “substitute” specimen) that (a) shows the mark in the drawing in actual use in commerce for the goods in Classes 1, 2 and 6, and (b) was in actual use in commerce prior to the expiration of the deadline for filing the statement of use.
Examples of specimens. Specimens for goods include a photograph of (1) the actual goods bearing the mark; (2) an actual container, packaging, tag or label for the goods bearing the mark; or (3) a point-of-sale display showing the mark directly associated with the goods. See 37 C.F.R. §2.56(b)(1), (c); TMEP §904.03(a)-(m). A webpage specimen submitted as a display associated with the goods must show the mark in association with a picture or textual description of the goods and include information necessary for ordering the goods. TMEP §904.03(i); see 37 C.F.R. §2.56(b)(1), (c).
Any web page printout or screenshot submitted as a specimen, whether for goods or services, must include the webpage’s URL and the date it was accessed or printed. 37 C.F.R. §2.56(c).
The USPTO will not accept an amended drawing that matches the mark in the specimens submitted in response to this refusal because the change would materially alter the drawing of the mark in the original application. See 37 C.F.R. §2.72(a)-(b); TMEP §807.14. Specifically, amending the stylized letter "V" to the stylized word "VIKING" changes the commercial impression of the mark in a way that would be a material alteration.
In addition, applicant may not respond by withdrawing the statement of use. See 37 C.F.R. §2.88(f); TMEP §1109.17.
For more information about drawings and instructions on how to satisfy this response option using the online Trademark Electronic Application System (TEAS) form, see the Drawing webpage.
If applicant does not respond to this Office action within the six-month period for response, International Classes 1, 2 and 6 will be deleted from the application. The application will then proceed with International Classes 17 and 19 only. See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).
RESPONSE GUIDELINES
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
How to respond. Click to file a response to this nonfinal Office action.
/Betty Chang/
Examining Attorney
Law Office 130
571-272-6517
betty.chang@uspto.gov
RESPONSE GUIDANCE