To: | Trcked Up, LLC (allison@trcked.com) |
Subject: | U.S. Trademark Application Serial No. 88294877 - MOJO - N/A |
Sent: | November 07, 2019 10:51:22 PM |
Sent As: | ecom109@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88294877
Mark: MOJO
|
|
Correspondence Address:
|
|
Applicant: Trcked Up, LLC
|
|
Reference/Docket No. N/A
Correspondence Email Address: |
|
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: November 07, 2019
This Office action is in response to applicant’s communication filed on October 14, 2019. The proposed amendment to the Identification of Goods and/or Services is unacceptable as it exceeds the scope of the original Recitation of Services, which was definite and clear. The Recitation reverts back to the original Identification of “Computer software design” services. The refusal to register under Section 2(d), which was not addressed in the Applicant’s response, is maintained and continued. The substitute Specimen is unacceptable as it is merely the mark on a colored (orange) background and does not associate the mark with the Applicant’s services (“Computer software design”).
Summary of Issues
The following is a summary of issues:
(1) Entire Amendment Exceeds the Scope of the Services in Original Application
(2) Refusal to Register under Section 2(d) is Maintained and Continued
(3) Substitute Specimen is Also Unacceptable – Merely the Mark on a Colored Background
Entire Amendment Exceeds the Scope of the Services in Original Application
In this case, the application originally identified the goods and/or services as follows: “Computer software design” in Class 42.
However, the proposed amendment identifies the following goods and/or services: “Software built specifically for Digital Cash Registers also known as Point of Sale and Online Ordering for Restaurants, Food Trucks and Mobile Kitchens” in Class 9.
This proposed amendment is beyond the scope of the original identification because the original identification was definite and clear. The original ID was clearly “services” and left no “wiggle room” to amendment to “software” (goods). When the original ID is definite and clear, the Applicant can only further narrow. The ID cannot be amended to entire different goods/services. Specifically, one cannot amend from “software design” (services) to a type of “software”. The Applicant is limited to the services of “Computer software design”.
Likelihood of Confusion – Refusal to Register under Section 2(d) – Maintained and Continued
The refusal to register under Section 2(d) is maintained and continued.
The Applicant did not address this refusal in their response. The recitation of services is reverted back to “Computer software design” in Class 42. As such, the refusal to register under Section 2(d) as to Registration No. 4978430 is maintained and continued because the marks are identical and the services are (essentially) the same. This is a strong 2(d) cite.
Substitute Specimen
Registration is refused because the substitute specimen does not show the applied-for mark in use in commerce in International Class 42 (which this applicant has reverted back to). 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). Specifically, the Specimen is only the mark on an orange background. This is not acceptable as it does not associate the mark with the listed services.
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).
In the present applicant, the Specimen would need to advertise the listed services of “Computer software design”.
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 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, please go to http://www.gov.uspto.report/trademarks/law/specimen.jsp.
Domestic Pro Se Applicant May Wish to Seek Trademark Counsel
Because of the legal technicalities and strict deadlines of the trademark application process, applicant may wish to hire a private attorney who specializes in trademark matters to assist in the process. The assigned trademark examining attorney can provide only limited assistance explaining the content of an Office action and the application process. USPTO staff cannot provide legal advice or statements about an applicant’s legal rights. TMEP §§705.02, 709.06. See Hiring a U.S.-licensed trademark attorney for more information.
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
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 nonfinal Office action
/Gina M. Fink/
Trademark Examining Attorney
Law Office 109
(571) 272-9275
gina.fink@uspto.gov
RESPONSE GUIDANCE