Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

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:  September 10, 2019

 

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on August 3, 2019.

 

This Office action is supplemental to and supersedes the previous Office action issued on May 24, 2019 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: 

 

·       DISCLAIMER OF “SERIES” REQUIRED. 

 

See TMEP §§706, 711.02. 

 

In a previous Office action dated May 24, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following: 

 

·       TRADEMARK ACT SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION WITH REGISTERED MARKS

·       TRADEMARK ACT SECTION 2(e)(1) REFUSAL – APPLIED-FOR MARK IS MERELY DESCRIPTIVE

·       REFUSAL OF REGISTRATION – SPECIMEN DOES NOT SHOW THE APPLIED-FOR MARK IN USE IN COMMERCE

 

Based on applicant’s response, the trademark examining attorney notes that the following refusal has been obviated: 

 

• TRADEMARK ACT SECTION 2(e)(1) REFUSAL – APPLIED-FOR MARK IS MERELY DESCRIPTIVE

 

In addition, the following refusal has been withdrawn: 

 

·       TRADEMARK ACT SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION WITH REGISTERED MARKS

 

See id. 

 

The following issue is continued and maintained:

 

·       REFUSAL OF REGISTRATION – SPECIMEN DOES NOT SHOW THE APPLIED-FOR MARK IN USE IN COMMERCE

 

The previously attached evidence from the May 24, 2019 Office Action is incorporated by reference.

 

Applicant must respond to all issues raised in this Office action and the previous May 24, 2019 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).

 

The following is a SUMMARY OF ISSUES that applicant must address:

• REFUSAL OF REGISTRATION – SPECIMEN DOES NOT SHOW THE APPLIED-FOR MARK IN USE IN COMMERCE [continued and maintained]
• DISCLAIMER OF “SERIES” REQUIRED [new issue]

 

REFUSAL OF REGISTRATION – SPECIMEN DOES NOT SHOW THE APPLIED-FOR MARK IN USE IN COMMERCE

 

Applicant did not provide any arguments in support of registration. Furthermore, applicant did not submit any substitute specimens.

 

I.                Webpage is insufficient display of goods

 

Registration is refused because the webpage specimen in International Class 7 is not an acceptable display associated with the goods and appears to be mere advertising material.  See TMEP §904.07(a).  The specimen, thus, fails to show the applied-for mark in use in commerce.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §2.56(a). 

 

To be acceptable, a specimen of a webpage display must include (1) a picture or sufficient textual description of applicant’s goods that (2) shows the mark associated with the goods, and (3) a way of ordering the goods (e.g., a “shop online” or “shopping cart” button or link, an order form, or a telephone number for placing orders).  TMEP §904.03(i); 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).  If applicant’s specimen includes a telephone number, internet address, and/or mailing address that appears only with corporate contact information, the specimen may not show sufficient means for ordering the goods.  See In re Genitope Corp., 78 USPQ2d 1819, 1822 (TTAB 2006); TMEP §904.03(i)(C)(2).  In that circumstance, the specimen may also need to include instructions on how to place an order or an offer to accept orders.  See In re Quantum Foods, Inc., 94 USPQ2d 1375, 1379 (TTAB 2010); TMEP §904.03(i)(C)(2).

 

In this case, the specimen does not include a way of ordering the goods in that the specimen shows the applied-for mark and a description of the goods but does not have an "add to cart" or shopping cart feature or any other way to order the goods.  See In re Sones, 590 F.3d at 1286-89, 93 USPQ2d at 1122-24; In re Azteca Sys., Inc., 102 USPQ2d at 1957; TMEP §§904.03(i) et seq.  Without this feature, the specimen is mere advertising material, which is generally not acceptable as a specimen for showing use in commerce for goods.  See In re Kohr Bros., 121 USPQ2d 1793, 1794 (TTAB 2017) (quoting In re Quantum Foods, Inc., 94 USPQ2d at 1379); In re Genitope Corp., 78 USPQ2d at 1822; TMEP §904.04(b). 

 

II.              Mark on specimen does not match mark in drawing

 

Registration is refused because the specimen does not show the mark in the drawing in use in commerce in International Class 7, which is required in the application or amendment to allege use.  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).

 

In this case, the specimen displays the mark as PRO SERIES TABLES.  However, the drawing displays the mark as PRO SERIES.  The mark on the specimen does not match the mark in the drawing because the specimen contains the additional wording "TABLES".  Applicant has thus failed to provide the required evidence of use of the mark in commerce.  See TMEP §807.12(a).

 

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, amending the mark on the drawing to agree with the mark on the specimen would be a material alteration because adding the term TABLES changes the essence of the mark and does not create the impression that the mark is essentially the same.

 

ACCEPTABLE SPECIMENS

 

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 identified in the application or amendment to allege use.  15 U.S.C. §1051(a)(1); 37 C.F.R. §2.56(a). 

 

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.  As stated above, webpage displays 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).

 

RESPONSE OPTIONS

 

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 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).

 

(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.

 

For an overview of both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, please go to the Specimen webpage. 

 

HOW TO SUBMIT A VERIFIED SUBSTITUTE SPECIMEN

 

To submit a verified substitute specimen online using the Trademark Electronic Application System (TEAS) response form, (1) answer “Yes” to form wizard question #2; and then, continuing on to the next portion of the form, under the heading “Classification and Listing of Goods/Services/Collective Membership Organization,” do the following for each relevant class for which a specimen is being submitted:  (2) check the box next to the following statement:  “Check here to modify the current classification number; listing of goods/services/the nature of the collective membership organization; dates of use; and/or filing basis; or to submit a substitute specimen, a foreign registration certificate, or proof of renewal of a foreign registration.  If not checked, the changes will be ignored.”; (3) under “Specimen File,” attach a specimen (attachment may not exceed 5 megabytes); (4) describe in the box below where you attached the file what the specimen consists of; and (5) check the box next to the following statement below the specimen description (to ensure that the declaration language is inserted into the form): “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application” [for an application based on Section 1(a), Use in Commerce] OR “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use” [for an application based on Section 1(b) Intent-to-Use].  Additionally, when submitting a verified specimen, the TEAS online form requires two signatures: one in the “Declaration Signature” section and one in the “Response Signature” section.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.  However, if applicant responds to the refusal, applicant must also respond to the requirement set forth below.

 

 

ADVISORY: AMENDMENT TO SUPPLEMENTAL REGISTER ACCEPTED

 

Applicant’s amendment to the Supplemental Register is accepted and the refusal based on Trademark Act Section 2(e)(1) is now obviated.  See 15 U.S.C. §1091; TMEP §714.05(a)(i).  However, if applicant subsequently amends to Trademark Act Section 1(b) in response to the refusal that the specimen fails establish to use of the mark in commerce, applicant will be required to withdraw the amendment to the Supplemental Register and the original refusal will be reinstated.  TMEP §714.05(a)(i).  A mark in an intent-to-use application is not eligible for registration on the Supplemental Register until an acceptable allegation of use has been filed.  37 C.F.R. §2.47(d); TMEP §815.02.

 

 

DISCLAIMER OF "SERIES" REQUIRED

 

Applicant must provide a disclaimer of the unregistrable part(s) of the applied-for mark even though the mark as a whole appears to be registrable on the Supplemental Register.  See 15 U.S.C. §1056(a), 1091(c); In re Water Gremlin Co., 635 F.2d 841, 845 n.6, 208 USPQ 89, 91 n.6 (C.C.P.A. 1980); TMEP §§1213, 1213.03(a).  A disclaimer of an unregistrable part of a mark will not affect the mark’s appearance.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965).

 

In this case, applicant must disclaim the wording “SERIES” because it is not inherently distinctive.  These unregistrable terms are generic for applicant’s goods.  See 15 U.S.C. §1091(c); In re Water Gremlin Co., 635 F.2d 841, 845 n.6, 208 USPQ 89, 91 n.6 (C.C.P.A. 1980); TMEP §1213.03(b). 

 

“A mark is generic if its primary significance to the relevant public is the class or category of goods or services on or in connection with which it is used.”  TMEP §1209.01(c)(i) (citing H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 989-90, 228 USPQ 528, 530 (Fed. Cir. 1986); In re ActiveVideo Networks, Inc., 111 USPQ2d 1581, 1600 (TTAB 2014)).  Determining whether a mark is generic requires a two-step inquiry:

 

(1)       What is the genus of goods at issue?

 

(2)       Does the relevant public understand the designation primarily to refer to that genus of goods?

 

H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d at 989-90, 228 USPQ at 530; In re Meridian Rack & Pinion, 114 USPQ2d 1462, 1463 (TTAB 2015) (citing In re 1800Mattress.com IP, LLC, 586 F.3d 1359, 1363, 92 USPQ2d 1682, 1684 (Fed. Cir. 2009)); TMEP §1209.01(c)(i). 

 

Regarding the first part of the inquiry, the genus of goods is often defined by an applicant’s identification of goods.  See In re Meridian Rack & Pinion, 114 USPQ2d at 1463 (citing Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 640, 19 USPQ2d 1551, 1552 (Fed. Cir. 1991)). 

 

In this case, the application identifies the goods as “Cutting machines; Cutting machines for metalworking; Plasma etching machines; Electric plasma cutters; Plasma cutting machines” which adequately defines the genus at issue.

 

Regarding the second part of the inquiry, the relevant public is the purchasing or consuming public for the identified goods.  Sheetz of Del., Inc. v. Doctor’s Assocs. Inc., 108 USPQ2d 1341, 1351 (TTAB 2013) (citing Magic Wand Inc. v. RDB Inc., 940 F.2d at 640, 19 USPQ2d at 1553).  In this case, the relevant public comprises ordinary consumers who purchase applicant’s goods, because there are no restrictions or limitations to the channels of trade or classes of consumers. Furthermore, SERIES is defined as "[a] number of objects or events arranged or coming one after the other in succession". See previously attached evidence from http://www.ahdictionary.com/word/search.html?q=series. In addition, the following attached evidence from http://www.maverickcnc.com/mv-series-cnc-plasma-tables/, http://www.multicam.com/v-pro-series-cnc-plasma/, http://piranhafab.com/plasma/, http://www.thermal-dynamics.com/tdus/en/products/plasma/plasma-systems/a-series.cfm, and http://www.troteclaser.com/en-us/laser-machines/laser-cutters-sp/ shows that the wording SERIES is commonly used in the industry to identify goods that belong to a line of products. Thus the relevant public would understand this designation to refer primarily to the genus.

 

Applicant may respond to this issue by submitting a disclaimer in the following format:

 

No claim is made to the exclusive right to use “SERIES” apart from the mark as shown.

 

For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.

 

 

RESPONSE OPTIONS

 

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 response to this nonfinal Office action  

 

 

ASSISTANCE

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal and/or requirement in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

 

/Aubrey Biache/

Examining Attorney

Trademark Law Office 123

(571) 270-0120

aubrey.biache@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 September 10, 2019 for

U.S. Trademark Application Serial No. 88305470

 

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. 

 

 

/Aubrey Biache/

Examining Attorney

Trademark Law Office 123

(571) 270-0120

aubrey.biache@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 September 10, 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.”