To: | RETROFITNESS IP, LLC (brent@markskein.com) |
Subject: | U.S. Trademark Application Serial No. 88296973 - RETRO UNIVERSITY - N/A |
Sent: | June 30, 2020 11:38:18 AM |
Sent As: | ecom128@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88296973
Mark: RETRO UNIVERSITY
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Correspondence Address:
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Applicant: RETROFITNESS IP, LLC
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Reference/Docket No. N/A
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: June 30, 2020
This Office action is in response to applicant’s communication filed on June 25, 2020.
This Office action is supplemental to and supersedes the previous Office action issued on June 24, 2020 in connection with this application. Based on information and/or documentation in applicant’s response, the trademark examining attorney now issues the following new requirement:
See TMEP §§706, 711.02.
In a previous Office action dated June 24, 2020, the trademark examining attorney refused registration of the applied-for mark based on the following:
The following is a SUMMARY OF ISSUES that applicant must address:
Applicant must respond to all issues raised in this Office action and the previous June 24, 2020 Office action, within six (6) months of the date of issuance of this Office action. 37 C.F.R. §2.62(a); see TMEP §711.02. If applicant does not respond within this time limit, the application will be abandoned. 37 C.F.R. §2.65(a).
I. REFUSAL – SECTIONS 1 AND 45 – SPECIMEN DOES NOT SHOW USE
Specimen does not show direct association between mark and services. Registration is refused because the specimen does not show a direct association between the mark and the services and fails to show the applied-for mark as actually used in commerce with the identified services in International Class 041. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a), (b)(2); TMEP §§904, 904.07(a), 1301.04(f)(ii), (g)(i). An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark as actually used in commerce for each international class of services identified in the statement of 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).
Further, the new specimen provided in the applicant’s Response does not show use because the URL and date of capture were not provided as required. A webpage submitted as a specimen must include the URL and access or print date to show actual use in commerce. 37 C.F.R. §2.56(c). Because the webpage specimen lacks the associated URL and/or access or print date on it, within the TEAS form used to submit the specimen, or in a verified statement in a later-filed response, it is unacceptable to show use of the mark in commerce.
When determining whether a mark is used in connection with the services in the application, a key consideration is the perception of the user. In re JobDiva, Inc., 843 F.3d 936, 942, 121 USPQ2d 1122, 1126 (Fed. Cir. 2016) (citing Lens.com, Inc. v. 1-800 Contacts, Inc., 686 F.3d 1376, 1381-82, 103 USPQ2d 1672, 1676 (Fed Cir. 2012)). A specimen must show the mark used in a way that would create in the minds of potential consumers a sufficient nexus or direct association between the mark and the services being offered. See 37 C.F.R. §2.56(b)(2); In re Universal Oil Prods. Co., 476 F.2d 653, 655, 177 USPQ2d 456, 457 (C.C.P.A. 1973); TMEP §1301.04(f)(ii).
To show a direct association, specimens consisting of advertising or promotional materials must (1) explicitly reference the services and (2) show the mark used to identify the services and their source. In re The Cardio Grp., LLC, 2019 USPQ2d 227232, at *2 (TTAB 2019) (quoting In re WAY Media, LLC, 118 USPQ2d 1697, 1698 (TTAB 2016)); TMEP §1301.04(f)(ii). Although 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 services. In re Adair, 45 USPQ2d 1211, 1215 (TTAB 1997) (quoting In re Johnson Controls Inc., 33 USPQ2d 1318, 1320 (TTAB 1994)).
To show a direct association, specimens showing the mark used in rendering the identified services need not explicitly refer to those services, but “there must be something which creates in the mind of the purchaser an association between the mark and the service activity.” In re The Cardio Grp., LLC, 2019 USPQ2d 227232, at *1 (TTAB 2019) (citing In re WAY Media, LLC, 118 USPQ2d 1697, 1698 (TTAB 2016)).
In the present case, the specimen does not show a direct association between the mark and services in that the mark is visible above a log in screen, but there is no indication anywhere for what type of services the mark is being used. Therefore, consumers seeing this log in screen would not be able to discern the type of services being provided by the applicant. As such, use is not shown, because consumers would not be able to make a direct association between the mark in the specimen and the services in the identification.
Examples of specimens. Specimens for services must show a direct association between the mark and the services and include: (1) copies of advertising and marketing material, (2) a photograph of business signage or billboards, or (3) materials showing the mark in the sale, rendering, or advertising of the services. See 37 C.F.R. §2.56(b)(2), (c); TMEP §1301.04(a), (h)(iv)(C). Any webpage printout or screenshot submitted as a specimen must include the webpage’s URL and the date it was accessed or printed. 37 C.F.R. §2.56(c).
Response option. Applicant may respond to this refusal by submitting, for each applicable international class, a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce prior to the expiration of the deadline for filing the statement of use and (b) shows the mark in actual use in commerce for the services identified in the statement of 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 prior to expiration of the filing deadline for filing a statement of use.” The substitute specimen cannot be accepted without this statement.
Applicant may not withdraw the statement of use. See 37 C.F.R. §2.88(f); TMEP §1109.17.
For an overview of this response option and instructions on how to submit a different specimen using the online Trademark Electronic Application System (TEAS) form, see the Specimen webpage.
II. REQUIREMENT – DATES OF USE DELETED FROM STATEMENT OF USE
Due to the applicant’s Response on June 25, 2020, the date of use were deleted. As such, the statement of use does not include the required dates of first use of the mark. A statement of use must include both (1) the date of first use of the mark anywhere and (2) the date of first use of the mark in commerce, even if they are the same. 37 C.F.R. §2.88(b)(1)(iii); TMEP §§903, 903.03, 1109.09(a); see 15 U.S.C. §1051(d)(1).
Therefore, applicant must provide these two dates of first use, verified with an affidavit or signed declaration under 37 C.F.R. §2.20. See 37 C.F.R. §§2.88(b)(1)(iii), 2.193(e)(1); TMEP §903.
For an overview of the requirements for providing verified dates of first use and instructions on how to satisfy these requirements online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademark/laws-regulations/dates-use.
ASSISTANCE
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.
/Daniel Travis Bice/
D. Travis Bice
Trademark Examining Attorney
Law Office 128
Telephone: (571) 272-3385
Email: Daniel.Bice@USPTO.gov
RESPONSE GUIDANCE