To: | Palo Alto Networks, Inc. (joshua.simmons@kirkland.com) |
Subject: | U.S. Trademark Application Serial No. 88300125 - PRISMA - 46516-4 |
Sent: | July 06, 2020 11:36:16 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. 88300125
Mark: PRISMA
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Correspondence Address:
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Applicant: Palo Alto Networks, Inc.
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Reference/Docket No. 46516-4
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: July 06, 2020
The statement of use has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
Specimen Refusal – Specimen Does Not Show Use in Specific Class
THIS PARTIAL REFUSAL APPLIES TO INTERNATIONAL CLASS 009 ONLY
Specifically, applicant’s specimen comprises a “screenshot of a web page depicting the mark”. This web page has no means for consumers to purchase or otherwise download applicant’s goods. For downloadable computer software, an applicant may submit a specimen that shows use of the mark on an Internet website. Such a specimen is acceptable only if it creates an association between the mark and software and provides sufficient information to enable the user to download or purchase the software from the website. See In re Azteca Sys., Inc., 102 USPQ2d 1955 (TTAB 2012). If the website simply advertises the software without providing a way to download, purchase, or order it, the specimen is unacceptable. See In re Dell Inc., 71 USPQ2d 1725, 1727 (TTAB 2004); see also In re Osterberg, 83 USPQ2d 1220, 1224 (TTAB 2007).
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 webpage 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).
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 and/or 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.
Response guidelines. For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
Partial Abandonment Advisory
If applicant does not timely respond to this Office action, the following class will be deleted from the application:
· International Class 009
See 37 C.F.R. §2.65(a); TMEP §718.02(a).
In such case, the application will then proceed with the following class only:
· International Class 042
See TMEP §718.02(a).
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.
Christopher Hoffman
/Christopher Hoffman/
Trademark Examining Attorney
Law Office 128
(571)272-3351
christopher.hoffman@uspto.gov
RESPONSE GUIDANCE