To: | Pismo Labs Technology Limited (docketing@fisherbroyles.com) |
Subject: | U.S. Trademark Application Serial No. 88297318 - FUSIONSIM POP - 08604.T002US |
Sent: | October 10, 2022 02:01:24 PM |
Sent As: | ecom118@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88297318
Mark: FUSIONSIM POP
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Correspondence Address:
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Applicant: Pismo Labs Technology Limited
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Reference/Docket No. 08604.T002US
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: October 10, 2022
The statement of use has been reviewed by the assigned trademark examining attorney. 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 – Unacceptable Specimen
Registration is refused because the specimen does not show the applied-for mark as actually used in commerce in connection with any of the goods specified in International Class 9. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); In re Keep A Breast Found., 123 USPQ2d 1869, 1876-79 (TTAB 2017); TMEP §§904, 904.07(a), 1301.04(d), (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 goods 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); see In re Gulf Coast Nutritionals, Inc., 106 USPQ2d 1243, 1247 (TTAB 2013).
Specifically, the specimen webpage identified as “online point of purchase page showing the FUSIONSIM POP router technology” merely shows the applied-for mark used to identify technology, in general, that is compatible and/or supported by a router advertised, promoted and sold under the brand names “Peplink” and “Pepwave”. This refusal is supported by the highlighted wording “[s]upports proprietary FUSIONSIM POP technology” on applicant’s specimen.
Therefore, inasmuch as the specimen does not show the proposed mark applied to the identified “wireless routers using remote subscriber identification modules (SIMs)”, “module servers, namely, communications, computer, network and Internet servers for managing, using and administering subscriber identification modules (SIMs) for wireless communication”, “holders specially adapted for multiple subscriber identification module (SIM) cards” and “wireless routers using subscriber identification modules (SIMs)”, consumers will not perceive the applied-for mark as an indication of source for these goods.
Notwithstanding the above, the specimen in International Class 9 is not acceptable as a display associated with the goods and does not show the applied-for mark as actually used in commerce. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §2.56(a), (b)(1); see TMEP §§904, 904.03(g)-(i), 904.07(a).
A webpage display specimen (1) must show use of the mark directly associated with the goods and (2) such use must be of a point-of-sale nature. 37 C.F.R. §2.56(b)(1). This means that this type of display specimen must include the following:
(1) A picture or sufficient textual description of the goods;
(2) The mark associated with the goods; and
(3) A means for ordering the goods such as a “shopping cart” button/link, an order form, or a telephone number for placing orders.
See In re Sones, 590 F.3d 1282, 1286-89, 93 USPQ2d 1118, 1122-24 (Fed. Cir. 2009); In re Azteca Sys., Inc., 102 USPQ2d 1955, 1957-58 (TTAB 2012); In re Dell Inc., 71 USPQ2d 1725, 1727 (TTAB 2004); Lands’ End v. Manbeck, 797 F. Supp. 511, 514, 24 USPQ2d 1314, 1316 (E.D. Va. 1992); TMEP §904.03(h), (i)-.03(i)(D).
In this case, aside from the fact that the mark is only used to identify technology supported by routers rather than the routers themselves, the specimen does not show sufficient means for ordering the goods since they are “currently unavailable”. Therefore, inasmuch as the specimen clearly advises potential consumers that the item is “currently unavailable” while noting “[w]e don’t know when or if this item will be back in stock”, there’s nothing for sale on the webpage.
Accordingly, such material is mere advertising, which is not acceptable as a specimen for goods. See In re Yarnell Ice Cream, LLC, 2019 USPQ2d 265039, at *15-16 (TTAB 2019) (quoting In re Siny Corp., 920 F.3d 1331, 1336, 2019 USPQ2d 127099, at *2-3 (Fed. Cir. 2019); see also Avakoff v. S. Pac. Co., 765 F.2d 1097, 1098, 226 USPQ 435, 436 (Fed. Cir. 1985); TMEP §904.04(b), (c).
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). As specified above, 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 webpage printout or screenshot submitted as a specimen must include the webpage’s URL and the date it was accessed or printed on the specimen itself, within the TEAS form that submits the specimen, or in a verified statement under 37 C.F.R. §2.20 or 28 U.S.C. §1746 in a later-filed response. See 37 C.F.R. §2.56(c); TMEP §§904.03(i), 1301.04(a).
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 goods 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.
Miscellaneous
If applicant’s attorney has questions about this application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at the number below.
Advisory Regarding E-mail Communications
If applicant’s attorney has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney. All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response. See 37 C.F.R. §2.191; TMEP §§709.04-.05. Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights. See TMEP §§705.02, 709.06.
How to respond. Click to file a response to this nonfinal Office action.
/David Yontef/
Trademark Examining Attorney
Law Office 118
(571) 272-8274
david.yontef@uspto.gov
RESPONSE GUIDANCE