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:  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Withdrawn Matter(s)

The following requirement(s) has been satisfied and withdrawn: Amendment to Allege Use.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

 

SUMMARY OF ISSUES:

 

• Failure to Function Refusal – Use of Mark on Specimen
• Specimen Refusal – Unattached Label Refusal
• Request for More Information

 

FAILURE TO FUNCTION AS A TRADEMARK

 

Registration is refused because the applied-for mark, as used on the specimen of record, does not function as a trademark to indicate the source of applicant’s goods and to identify and distinguish them from others.  Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§1051-1052, 1127; see In re Phoseon Tech., Inc., 103 USPQ2d 1822, 1827-28 (TTAB 2012); In re Remington Prods., Inc., 3 USPQ2d 1714, 1715 (TTAB 1987); TMEP §§904.07(b); 1202 et seq.

 

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.

 

Response options.  Applicant may respond to this refusal by satisfying one of the following for each applicable 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 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:

 

1. Applicant must submit additional product information about applicant’s goods.  See 37 C.F.R. §2.61(b); TMEP §814.  The requested product information should include fact sheets, instruction manuals, and/or advertisements.  If these materials are unavailable, applicant should submit similar documentation for goods of the same type, explaining how its own product will differ.  If the goods feature new technology and no competing goods are available, applicant must provide a detailed description of the goods.

 

2. Explain whether the wording “AST” in the mark has any meaning or significance in the trade or industry in which applicant’s goods are manufactured or provided, any meaning or significance as applied to applicant’s goods, or if such wording is a term of art within applicant’s industry. 

 

3. Applicant must respond to the following questions: 

 

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:

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06. 

 

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

• 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 May 30, 2020 for

U.S. Trademark Application Serial No. 88311698

 

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. 

 

 

/C. Skye Young/

Trademark Examining Attorney

Law Office 117

(571) 272-9713

skye.young@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 May 30, 2020, 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.”