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 24, 2019

 

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.  

 

THIS IS A FINAL ACTION.

Introduction:

This Final action is in response to applicant’s communication filed on 07/11/2019.

In a previous Office action(s) dated 04/23/2019, the trademark examining attorney refused registration of the applied-for mark based on the following:  failure to show the applied-for mark in use in commerce with any of the specified goods due to the specimen and drawing differing.

Applicant’s arguments have been considered and found unpersuasive.  Thus, the trademark examining attorney maintains and now makes FINAL the refusal(s) and/or requirement(s) in the summary of issues below.  See 37 C.F.R. §2.63(b); TMEP §714.04.

Summary of Final Issues That Applicant Must Address:

(1) Specimen and Drawing Differ

 

Specimen and Drawing Differ:

 

 

The refusal of registration based on the failure to provide a specimen that shows the applied-for mark in use in commerce as a trademark in Class 09 is now made final.  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 disagrees with the mark on the drawing. In this case, the specimen displays the mark as CHILLIRACK stylized with a round design element separating the wording CHILLI and RACK.  However, the drawing displays the mark as CHILLIRACK as one wording in standard character. 

 

The CHILLIRACK wording stylized with the round design in the mark separating the wording on the drawing creates a different and separate commercial impression apart from the use of CHILLIRACK as one word.  In particular, the CHILLI and RACK are separated and as presented the M and I stylized with the terms are not likely to be read together as one word.

 

In addition, the specimens of use provided by the applicant support that consumers are likely to perceive the mark and read two separate words. In particular, the specimen submitted shows the mark in the upper left-hand corner of the applicant’s goods (identified as “Computer chassis; Computer servers; Mounting racks for computer hardware; Mounting racks for telecommunications hardware”), which appear as a mounting rack. The fact that the applicant’s goods as shown in the specimen appear as mounting racks provides a descriptive meaning to the wording RACK when used separately from CHILLI. Thus, the context of how the mark is used on the specimen reinforces that the terms used separately relate to the goods and create an independent meaning from the use of the compounded wording CHILLIRACK.  

 

Contrary to applicant’s arguments and case law citations in support thereof, applicant’s case is not like In re wTe Corp., 87 U.S.P.Q.2d 1536 (T.T.A.B. 2008). In the cited case the Board concluded that the mark SPECTRAMET should not have been refused registration based on the unacceptability of the specimen. The specimen showed the applied –for mark SPECTRAMET replacing “the letter “C” in the mark with an arrow design… creating a design element that gives a general circular impression similar to the yin and

yang symbol, and [is] clearly different from the letter “C””. Further, “because of the circular nature of the arrow design that is depicted on the specimen of use, the arrow design could be perceived as representing the letter “O,” thereby creating a completely different commercial impression.” The Board then analyzed:

 

Here, while it is not beyond the realm of possibility that some purchasers may, at least initially, wonder if applicant’s mark is actually SPEOTRAMET, most would view the mark as applicant indicates, SPECTRAMET. Not only is “Spectr-” a more common beginning for a word in English (spectral, spectrographic, spectrogram, spectrometer, spectrophotometer, spectroscope, spectrum, etc.), but also the fourth letter, as used by applicant, simply looks more similar to a “C” than an “O.” There would be little reason for consumers to view the mark as displayed on the specimen as anything other than SPECTRAMET. We add that the arrow design is not a very significant element and the mark in the drawing and the specimens remain “the same in essence.”

 

This analysis used in the present case would yield a different conclusion. The case at hand uses the wording CHILLI and RACK together as CHILLIRACK. The wording CHILLI is not commonly used in the same manner as “SPECTR-“. Further, the wording “C” appeared as a circle design in the cited case which was argued to have changed the sound of the mark from SPECTRAMET to SPEOTRAMET. Consumers are not likely to identify the mark as the latter pronunciation, instead they are likely to read it as the applicant intended because of its commonality and use in the English language. In this case, the design appears as an addition in the specimen and not in replacement of a letter in the wording. The wording CHILLIRACK appears as CHILLI”O”RACK. While the wording is not likely to be read as CHILLORACK, the wording as separated is likely to be read as CHILLI RACK being two separate independent words.

 

Lastly the Board also stated “we cannot find that the display of applicant’s mark is uncommon, noteworthy, or extraordinary. Applicant’s mark, like many marks, contains a design.” In this case, the design is distinguishable and the wording independently evoke a different meaning.

 

In regards to In re R.J. Reynolds Tobacco Co., 222 USPQ 552, 552 (TTAB 1984), the mark as depicted in the original drawing appeared with hyphens and the specimen appears with the hyphens inverted as vertical lines. This case is also distinguishable because in this case applicant did not provide any additional matter with the wording CHILLIRACK. The mark did not include any designs or punctuation and the words were not separated by any additional feature.

 

In conclusion, the examining attorney continues to disagree with the applicant’s position. Thus, the examining attorney is unable to conclude that the mark on the drawing is a substantially exact representation of the mark as it appears on the specimen and this refusal is made FINAL.

 

Applicant may respond to this refusal by satisfying one of the following:

 

(1)       Submit a different specimen (a verified “substitute” specimen) for each applicable international class that (a) shows the mark in the drawing in actual use in commerce for the goods and/or services in the application or amendment to allege use, and (b) 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.

 

Examples of specimens for goods include tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, and displays associated with the actual goods at their point of sale.  See TMEP §§904.03 et seq.  Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods.  TMEP §904.03(i).  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).

 

(2)       Submit a request to 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.

 

The USPTO will not accept an amended drawing submitted in response to this refusal because the changes would materially alter the drawing of the mark in the original application or as previously acceptably amended.  See 37 C.F.R. §2.72(a)-(b); TMEP §807.14.  Specifically, as mentioned above, the wording used separately evoke a different commercial impression and the terms used independently have separate meaning. Further, the use of RACK separate from CHILLI as shown in the specimen is descriptive as used in connection to the applicant’s goods.

 

For more information about drawings and instructions on how to satisfy these response options online using the Trademark Electronic Application System (TEAS) form, see the Drawing webpage.

PROPER RESPONSE TO A FINAL ACTION:

Applicant must respond within six months of the date of issuance of this final Office action or the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond by providing one or both of the following:

 

(1)       a response filed using the Trademark Electronic Application System (TEAS) that fully satisfies all outstanding requirements and/or resolves all outstanding refusals; and/or

 

(2)       an appeal to the Trademark Trial and Appeal Board filed using the Electronic System for Trademark Trials and Appeals (ESTTA) with the required filing fee of $200 per class.

 

37 C.F.R. §2.63(b)(1)-(2); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.

 

In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues.  TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters).  There is a fee required for filing a petition.  37 C.F.R. §2.6(a)(15).

Assistance:

If applicant 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. §§2.62(c), 2.191; TMEP §§304.01-.02, 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 final Office action and/or appeal it to the Trademark Trial and Appeal Board (TTAB).

 

 

/Eliana Torres/

Examining Attorney

Law Office 110

(571) 272-6907

Eliana.Torres@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 24, 2019 for

U.S. Trademark Application Serial No. 88299074

 

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. 

 

 

/Eliana Torres/

Examining Attorney

Law Office 110

(571) 272-6907

Eliana.Torres@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 24, 2019, 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.”