To: | JWF Industries, Inc. (trademarks@webblaw.com) |
Subject: | U.S. Trademark Application Serial No. 88311698 - AST - 6705-1807993 |
Sent: | May 30, 2020 09:37:18 PM |
Sent As: | ecom117@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88311698
Mark: AST
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Correspondence Address: Christian E. Schuster, Reg. No. 43,908 |
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Applicant: JWF Industries, Inc.
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Reference/Docket No. 6705-1807993
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: May 30, 2020
This letter responds to applicant’s communication filed on May 26, 2020.
Withdrawn Matter(s)
The following requirement(s) has been satisfied and withdrawn: Amendment to Allege Use. TMEP §§713.02, 714.04.
Matter(s) Continued
The following requirement(s) is now maintained and CONTINUED: (1) Generic Failure to Function Refusal; and (2) Section 2(e)(1) refusal. See 37 C.F.R. §2.63(a).
New Issue:
Given the applicant’s response, the examining attorney notes the following new issue(s): (1) Failure to Function as a Trademark Refusal; (2) Specimen Refusal and (3) Request for More Information
FAILURE TO FUNCTION AS A TRADEMARK
The applied-for mark, as shown on the specimen, does not function as a trademark because the mark merely appears under the designation “Type:” on an unattached label. As presented on the specimen, the mark does not appear as a trademark because it fails to present itself as an indicator of the source of the goods. Rather, it appears to merely inform consumers of nature or type of goods.
(1) Submit a different specimen (a verified “substitute” specimen) that (a) 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 and (b) shows proper trademark use for the goods in the application or amendment to allege 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 at least as early as the filing date of the application or prior to the filing of the amendment to allege use.” The substitute specimen cannot be accepted without this statement.
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 must include the webpage’s URL and the date it was accessed or printed. 37 C.F.R. §2.56(c).
(2) Amend the filing basis to intent to use under Section 1(b) for which no specimen is required before publication. See TMEP §806.03(c). This includes withdrawing an amendment to allege use, if one was filed. This option will later necessitate additional fee(s) and filing requirements, including a specimen.
To amend the basis from Section 1(a) to Section 1(b), applicant must submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “Applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date.” 37 C.F.R. §2.34(a)(2); TMEP §806.01(b); see 15 U.S.C. §1051(b); 37 C.F.R. §2.35(b)(1).
To withdraw an amendment to allege use, applicant must make a statement in the record requesting that the amendment to allege use be withdrawn.
For more information about the response options above and instructions on how to submit a different specimen using the online Trademark Electronic Application System (TEAS) form, see the Specimen webpage.
SPECIMEN
Unattached tag or label does not include information about the goods. Registration is refused because the image of a tag or label submitted as a specimen in International Class(es) 6 and 20 does not show the tag or label (1) attached to the goods or (2) including informational matter that typically appears on an actual tag or label for these types of goods as they are sold or transported in commerce and thus fails to 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. §§2.34(a)(1)(iv), 2.56(a), (b)(1); Mandatory Electronic Filing & Specimen Requirements, Examination Guide 1-20, at V.A. (Rev. Feb. 2020); TMEP §§904.04(a), 904.07(a). 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 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).
Electronic specimens may be an image, such as a photograph or scanned copy, of the physical specimen. An image of a real tag or label attached to the goods generally meets the requirement for a specimen showing the applied-for mark as actually used in commerce. 37 C.F.R. §2.56(a), (b)(1); TMEP §904.03(a). If not shown physically attached to the goods, an image of a tag or label may be accepted if, in addition to showing the mark, the tag or label bears indicia that it is an actual tag or label that is affixed to the goods as they are sold or transported in commerce. For example, the label “include[s] informational matter that typically appears on a label in use in commerce for those types of goods such as net weight, volume, UPC bar codes, lists of contents or ingredients, or other information that is not part of the mark but provides information about the goods.” Examination Guide 1-20, at V.A.
Examples of specimens for goods include a photograph of (1) the actual goods bearing the mark; (2) labels or tags shown attached to the goods or including informational matter that typically appears on a tag or label in use in commerce for these types of goods; (3) an actual container or packaging for the goods bearing the mark; or (4) 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 must include the webpage’s URL and the date it was accessed or printed. 37 C.F.R. §2.56(c).
Response options. Applicant may respond to the specimen refusal by satisfying one of the following for each applicable international class:
(1) Submit a different specimen (a verified “substitute” specimen) that (a) 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 and (b) shows the mark in actual use in commerce for the goods identified in the application or amendment to allege 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 at least as early as the filing date of the application or prior to the filing of the amendment to allege use.” The substitute specimen cannot be accepted without this statement.
(2) Amend the filing basis to intent to use under Section 1(b) (which includes withdrawing an amendment to allege use, if one was filed), as no specimen is required before publication. This option will later necessitate additional fee(s) and filing requirements, including a specimen.
For an overview of the response options referenced above and instructions on how to satisfy these options using the online Trademark Electronic Application System (TEAS) form, see the Specimen webpage.
REQUEST FOR MORE INFORMATION
To permit proper examination of the application, applicant must provide all the following information:
a. Do the applicant’s goods include aboveground storage tanks?
b. Do the applicant’s goods include underground storage tanks?
c. What are the types of goods typically stored in the applicant’s storage tanks?
See 37 C.F.R. §2.61(b); TMEP §814.
Factual information about the goods must clearly indicate how they operate, their salient features, and their prospective customers and channels of trade. Conclusory statements regarding the goods will not satisfy this requirement.
Failure to comply with a request for information is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814. Merely stating that information about the goods is available on applicant’s website is an insufficient response and will not make the relevant information of record. See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).
REFUSAL – APPLIED-FOR MARK IS GENERIC - CONTINUED
The refusal to register the mark on the Supplemental Register because the proposed mark is not in lawful use in commerce, as required by Trademark Act Section 23, is maintained and CONTINUED. See 15 U.S.C. §1091(a); 37 C.F.R. §2.47(a); TMEP §714.05(a)(i).
REFUSAL – SECTION 2(E) (1) - DESCRIPTIVENESS REFUSAL - CONTINUED
The refusal to register the mark on the Principal Register because the proposed mark is descriptive of the goods is maintained and CONTINUED. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.
PLEASE NOTE:
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.
/C. Skye Young/
Trademark Examining Attorney
Law Office 117
(571) 272-9713
skye.young@uspto.gov
RESPONSE GUIDANCE