Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

SUPPLEMENTAL 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:  July 31, 2019

 

This Office action is supplemental to and supersedes the previous Final Office action issued on July 31, 2019 in connection with this application.  The assigned trademark examining attorney inadvertently omitted the requirement with regard to the meaning and/or translation of the mark; the trademark examining attorney apologizes for any inconvenience or confusion caused by this. 

 

Applicant must respond to all the issues in the current action with the six-month time period indicated above; all requirements are repeated below.

 

This Office action is in response to applicant’s communication filed on July 5, 2019.

 

SUMMARY OF ISSUES IN PRIOR ACTION:

• Refusal Under Sections 1 and 45
• Requirement for Information Regarding Specimen

·       Requirement for Meaning and/or Translation of the Mark

 

SUMMARY OF ISSUES MADE FINAL:

• Refusal Under Sections 1 and 45
• Requirement for Information Regarding Specimen

·       Requirement for Meaning and/or Translation of the Mark

 

37 C.F.R. §2.63(b)

 

FINAL REFUSAL UNDER SECTIONS 1 AND 45 – UNVERIFIED SPECIMEN

 

The refusal to register the applied-for mark is now made final because applicant failed to provide in response to the refusal a properly verified specimen showing the mark in use in commerce for applicant’s goods.  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), 2.76(b)(2); TMEP §§904, 904.07(a), 1301.04(g)(i). 

 

Applicant was previously refused registration and required to submit a verified substitute specimen to show use of the applied-for mark in commerce because the originally submitted specimens consisted of material which appeared to be digitally created or a mock-up of the mark on the goods or packaging.  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, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a), 2.76(b)(2); TMEP §§904, 904.07(a). 

 

In response to each refused international class, applicant provided substitute specimens that appear to show use of the applied-for mark in commerce but is not verified.  The USPTO does not accept materials submitted as specimens without proper verification.  See 37 C.F.R. §§2.34(a)(1), 2.59(a)-(b)(1), 2.76(b)(2); In re Adair, 45 USPQ2d 1211, 1212 n.2 (TTAB 1997).  In other words, the substitute specimen is acceptable to show use of the mark on the goods for which registration is sought; however, applicant has failed to provide statement verifying that the substitute specimen was in use in commerce as of the filing date of the application.

 

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). 

 

Applicant may respond to this final specimen refusal by satisfying one of the following for each applicable international class: 

 

(1)       Submit a verification of the previously submitted substitute specimen, attesting that it was in actual use in commerce at least as early as the filing date of the application.  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) specimens(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)       Submit a different and properly verified 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 and/or services identified in the application or amendment to allege use.  The substitute specimen cannot be accepted without the verified statement referenced in (1).

 

(3)       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 all the response options referenced above and instructions on how to satisfy these options online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/specimen.jsp.

 

FINAL REQUIREMENT FOR INFORMATION REGARDING THE SPECIMENS

 

A specimen must show the mark as used in commerce, which means use in the ordinary course of trade (not merely to reserve a right in the mark).  15 U.S.C. §§1051, 1052, 1127.  A specimen shows a mark used in commerce for goods only if it shows the mark placed on the goods, packaging, tags or labels affixed to the goods, or displays of the goods, and the goods are actually sold or transported for sale in commerce.  15 U.S.C. §1127.  Because the specimen of record appears to be digitally created or altered, or is otherwise a mock-up, it does not appear to show the mark as actually used in commerce.  Therefore, to permit proper examination of the application, applicant must submit additional information for the record about the specimen and how the mark as shown in the specimen is in use in commerce with applicant’s goods.  See 37 C.F.R. §2.61(b); TMEP §814.

 

Applicant was required to respond to questions regarding use of the specimen; however applicant’s responses are not clear and must be clarified.  Accordingly, applicant must clarify its responses to the questions and some of the documentation provided. 

 

Specifically, applicant indicated that the goods are sold on Amazon.com and provided a copy of an invoice; however, the price on Amazon indicates that the goods are sold for $10.99, but the invoice shows the goods sold were $15.99.  Applicant must explain this inconsistency. 

 

In response to the question inquiring as to whether the specimens submitted were created for submission with the application, applicant has indicated the following “Specimen created for submission with this application.”  In other words, applicant has indicated that the specimens are mock-ups, i.e., created specifically for the purposes of applying for a trademark rather than specimens actually used in commerce.  Applicant must more fully explain whether or not the specimens were created solely for purposes of submission with tis application.

 

See 37 C.F.R. §2.61(b); TMEP §814.  

 

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 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).

 

FINAL REQUIREMENT TO INDICATE MEANING AND/OR TRANSLATION OF MARK

 

Applicant was required to respond to the questions below, but has failed to address this requirement.  Therefore, the requirement is repeated – that is, in order to permit proper examination of the application, applicant must provide all the following information:

 

(1)  Explain whether the wording in the mark “BABAHU” or “BABA HU” 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. 

 

(2)  Explain whether the wording in the mark “BABAHU” or “BABA HU” identifies a geographic place.

 

(3) Submit an English translation of all wording in the mark that appears to be foreign.  37 C.F.R. §§2.32(a)(9), 2.61(b); TMEP §809.  Specifically, here, applicant must indicate whether “BABAHU” or “BABA HU” has a meaning in a foreign language; and if so, provide a translation statement. TMEP §809.03.

 

See 37 C.F.R. §2.61(b); TMEP §814. 

 

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.

 

RESPONDING TO A FINAL OFFICE ACTION

 

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).

 

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(s) and/or requirement(s) 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. 

 

ADVISORY - U.S. COUNSEL RULES CHANGES

 

On August 3, 2019, changes to the federal trademark regulations will become effective that require trademark applicants, registrants, and parties to Trademark Trial and Appeal Board proceedings who are foreign-domiciled (have a permanent legal residence or a principal place of business outside of the United States), including Canadian filers, to have an attorney who is licensed to practice law in the United States represent them at the USPTO. In addition, U.S.-licensed attorneys representing a trademark applicant, registrant, or party will generally be required to provide their bar membership information, a statement attesting to their good standing in that bar, and their postal/email addresses in trademark-related submissions.  All U.S.-licensed attorneys who practice before the USPTO are subject to the rules in 37 C.F.R. Part 11 governing representation of others, including the USPTO’s Rules of Professional Conduct. 

 

These changes are being made to increase customer compliance with federal trademark law, improve the accuracy of trademark submissions to the USPTO, and safeguard the integrity of the U.S. trademark register.  See the U.S. Counsel Rule change webpage for more information.

 

 

 

 

 

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 final Office action and/or appeal it to the Trademark Trial and Appeal Board (TTAB).

 

 

/Susan K. Lawrence/

Trademark Examining Attorney

Law Office 116, USPTO

(571) 272-9186

sue.lawrence@uspto.gov

(informal communication only)

 

 

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 July 31, 2019 for

U.S. Trademark Application Serial No. 88313779

 

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. 

 

 

/Susan K. Lawrence/

Trademark Examining Attorney

Law Office 116, USPTO

(571) 272-9186

sue.lawrence@uspto.gov

(informal communication only)

 

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 July 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.”