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:  December 31, 2019

 

STATUS OF THE APPLICATION

 

This Office action is in response to applicant’s communication dated November 25, 2019 where applicant:

 

1. Submitted substitute specimen;
2. Submitted a URL of a website where its goods are being sold

 

The examining attorney has reviewed the applicant’s response and determined the following:

 

1. Applicant’s substitute specimen is unacceptable because it fails to show the mark in use in commerce for the specified services.   Therefore the acceptable specimen requirement is now made FINAL;
2. Applicant’s URL was nonfunctioning and no other information was submitted in response to the information about specimen requirement.  Therefore the information about the specimen requirement is now made FINAL;

 

 

SUMMARY OF ISSUES:

 

• Acceptable Specimen Required
• Information about Specimen Required

 

The refusal to register the applied-for mark in International Class is now made final because the record does not contain a specimen showing the mark in use in commerce.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a), 2.63(b); TMEP §§904, 904.07(a). 

 

Applicant was previously refused registration in International Class 14 because the original specimen appeared to consist of a digitally altered image or a mock-up of the intended depiction of the mark on the goods or their packaging for future use in commerce.  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 goods and/or 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). 

 

In response to each refused international class, applicant provided a substitute specimen consisting of an image of the goods with the mark displayed.  The substitute specimen appears to have been created for submission with the response and does not show the applied-for mark in actual use in commerce because it appears to be digitally altered.  Actual “use in commerce” occurs when the mark is placed on the goods or their containers in the ordinary course of trade and the goods are actually sold or transported, and not merely to reserve a right in the mark.  See 15 U.S.C. §1127; TMEP §901.01.  Further the applied-for-mark is not displayed on the specimen, which depicts the wording “CLEAR CONSCIENCE” and not the mark as it appears in the application, “CLEAR CONSCIENCE DIAMONDS.”

 

A digitally altered image, mock-up, or photograph of an intended depiction of a mark on a label, tag, or piece of paper placed on top of an applicant’s or a third party’s goods or packaging merely for the purposes of filing a trademark application is generally not acceptable to show applicant’s use of the applied-for mark in commerce.  See 15 U.S.C. §1127; TMEP §§904.03(a), 904.04(a), 904.07(a); cf. In re Chica, Inc., 84 USPQ2d 1845, 1848 (TTAB 2007); In re The Signal Cos., 228 USPQ 956, 957-58 n.4 (TTAB 1986).  Applicant must show the mark used on applicant’s goods or packaging as it is seen by the purchasing public, with goods that are sold or transported in commerce that is regulated by the U.S. Congress.  See 15 U.S.C. §1127; TMEP §901.01. 

 

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 a statement of use.”  The substitute specimen cannot be accepted without this statement.

 

Applicant, however, may not withdraw the statement of use.  See 37 C.F.R. §2.88(f); TMEP §1109.17.

 

 

INFORMATION ABOUT SPECIMEN REQUIRED

 

Applicant was required to provide additional information regarding the specified goods to enable proper examination of the application.  However, applicant did not submit the requested information in applicant’s response.  “The Trademark Rules of Practice have the effect of law and failure to comply with a request for information is grounds for refusal of registration.”  In re Page, 51 USPQ2d 1660, 1665 (TTAB 1999) (citing In re Babies Beat Inc., 13 USPQ2d 1729, 1731 (TTAB 1990)).  Thus, the requirement for additional information is maintained and made final.  37 C.F.R. §§2.61(b), 2.63(b).

 

Under 37 C.F.R. §2.61(b), an examining attorney “may require the applicant to furnish such information and exhibits as may be reasonably necessary to the proper examination of the application.”  Under this rule, an examining attorney may request literature, exhibits, and general information concerning applicant’s goods and/or services, circumstances surrounding applicant’s applied-for mark, and, if applicable, the use or intended use of applicant’s applied-for mark.  See TMEP §814.

 

If an applicant has access to the requested information, the applicant must make this information of record.  In re Planalytics, Inc., 70 USPQ2d 1453, 1457 (TTAB 2004).  If an applicant does not have access to the requested information, the applicant should submit a statement to that effect.  In re Planalytics, Inc., 70 USPQ2d at 1457 n.2.  If the requested information is confidential, or if, applicant prefers, for a valid reason, that such information not appear in the publicly-available application record, the applicant may redact such text or, for confidential information, provide a written explanation or summary.  TMEP §814.

 

 

RESPONDING TO A FINAL

 

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).

 

 

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 request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).

 

 

Fabiola Gallego

/Fabiola Gallego/

Examining Attorney, Law Office 113

United States Patent and Trademark Office

Fabiola.Gallego@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 December 31, 2019 for

U.S. Trademark Application Serial No. 88302072

 

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. 

 

 

Fabiola Gallego

/Fabiola Gallego/

Examining Attorney, Law Office 113

United States Patent and Trademark Office

Fabiola.Gallego@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 December 31, 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.”