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:  December 13, 2019

 

INTRODUCTION

 

In a previous Office action dated 5/5/2019, the trademark examining attorney refused registration of the applied-for mark based on the following: Trademark Act Section 2(d) for a likelihood of confusion with a registered mark, potential refusal with a prior-filed pending application, Section 2(e)(4) refusal for being primarily merely a surname, and a partial refusal for failure to show the applied-for mark being used to indicate the source of Applicant’s goods rather than only identifying the pseudonym of the author.  In addition, applicant was required to satisfy the following requirement: amend the identification of goods and services.

 

Based on applicant’s response, the trademark examining attorney notes that the following requirement has been satisfied:  amend the identification of goods and services.  See TMEP §713.02. 

 

The following refusals have also been obviated:  Section 2(d) refusal, potential refusal with a prior-filed pending application, and Section 2(e)(4) refusal.  See id. 

 

However, the following refusal is maintained: Partial Refusal - Sections 1, 2, and 45: Pseudonym of Author.

 

In addition, upon further review of the application, the examining attorney has determined that an additional refusal must issue as set forth below. The trademark examining attorney apologizes for any inconvenience caused by the delay in raising this issue. 

 

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

 

• NEW ISSUE:  Partial Refusal - Sections 1 and 45: Specimen Fails to Show Use in Commerce

• Partial Refusal - Sections 1, 2, and 45: Pseudonym of Author (Maintained and Continued)

• Advisory - Partial Abandonment

• Advisory - Consent Statement

 

PARTIAL REFUSAL - SECTIONS 1 AND 45: SPECIMEN FAILS TO SHOW USE IN COMMERCE

 

THIS PARTIAL REFUSAL APPLIES TO CLASS 016 ONLY

 

Registration is refused because the specimen does not show the applied-for mark in use in commerce in International Class 016.  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).  Specifically, none of the submitted specimens show the applied-for mark “FOO” being used as a source indicator on any of the goods specified in Class 016. While there appear to be photographic prints that are accompanied by the wording “Photos by Foo,” it looks as if Applicant is simply displaying photos he has taken rather than actually selling these goods in commerce. Applicant also references “web version of article” in the specimen description, further showing that these are unacceptable for Class 016 because they show use with electronic publications rather than printed material.

 

However, in the response, Applicant provided evidence that appears to show use of the applied-for mark in commerce with printed art books in the field of photography, but it is not verified. THESE MATERIALS WOULD BE ACCEPTABLE SPECIMENS IF SUBMITTED WITH PROPER VERIFICATION. 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).  

 

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. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(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.  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).  However, leaflets, handbills, advertising circulars, and other advertising materials generally are not acceptable specimens for goods.  See TMEP §§904.03 et seq.

 

Applicant may respond to this 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 or prior to the filing of an 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)       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 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 http://www.gov.uspto.report/trademarks/law/specimen.jsp.

 

Advisory - Substitute Specimen TEAS Instructions

 

To submit a verified specimen or 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.

 

Applicant should note the following additional ground for refusal.

 

PARTIAL REFUSAL - SECTIONS 1, 2, AND 45 REFUSAL: PSEUDONYM OF AUTHOR

 

THIS PARTIAL REFUSAL APPLIES TO CLASS 016 ONLY

 

Registration is refused because the applied-for mark, as used on the specimen of record, identifies only the name or pseudonym of the author of a written work; it does not function as a trademark to identify and distinguish applicant’s goods from those of others and to indicate the source of applicant’s goods.  Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051-1052, 1127; see In re First Draft, Inc., 76 USPQ2d 1183 (TTAB 2005); TMEP §§904.07(b), 1202.09(a).  Written works include books or columns presented in print, recorded, or electronic form.  See TMEP §1202.09(a).

 

In the response, Applicant has shown that the mark has been used on a series and stated that he publishes the goods and controls their quality. However, Applicant did not verify the statement that he publishes the goods and controls their quality WITH AN AFFIDAVIT OR SIGNED DECLARATION under 37 C.F.R. §2.20. See TMEP §1202.09(a)(ii)(B); see 37 C.F.R. §2.193(e)(1).

 

Applicant may respond to this refusal by satisfying one of the following:

 

(1) Submitting evidence that (a) the name is used on a series of written works, and (b) the name is promoted and recognized by others as the source of the series of written works.  In re First Draft, 76 USPQ2d at 1190; see TMEP §1202.09(a)-(a)(ii)(A).  Evidence of a series includes copies of at least two different book covers or packaging for recorded books that show the name sought to be registered.  TMEP §1202.09(a)(i); see In re Scholastic, Inc., 23 USPQ2d 1774, 1777-78 (TTAB 1992).  Evidence that the name is promoted and recognized by others as a source of the series includes advertising that promotes the name as a source of the series, third-party reviews showing use of the name by others to refer to the series, and/or declarations from publishers, retailers, purchasers or readers showing recognition of the name as an indicator of the source of a series of written works.  TMEP §1202.09(a)(ii)(A); see In re First Draft, 76 USPQ2d at 1191; In re Scholastic, 23 USPQ2d at 1777-78.;

 

(2) Submitting evidence that (a) the name is used on a series of written works, and (b) the author controls the quality of the written works and controls the use of the name, such that the name has come to represent an assurance of quality to the public.  In re First Draft, 76 USPQ2d at 1190; see TMEP §1202.09(a)-(a)(ii), (a)(ii)(B); cf. In re Polar Music Int’l AB, 714 F.2d 1567, 1572, 221 USPQ 315, 318 (Fed. Cir. 1983).  Evidence of a series includes copies of at least two different book covers or packaging for recorded books that show the name sought to be registered.  TMEP §1202.09(a)(i); see In re Scholastic, 23 USPQ2d at 1777-78.  Evidence of control over the quality of the written works and use of the name includes licensing contracts or similar documentation.  TMEP §1202.09(a)(ii)(B); see In re Polar Music, 714 F.2d at 1568-72, 221 USPQ at 316-18; In re First Draft, 76 USPQ2d at 1191.  HOWEVER, IF THE WRITTEN WORKS ARE PUBLISHED DIRECTLY UNDER APPLICANT’S CONTROL, APPLICANT MAY SUBMIT SOLELY AS EVIDENCE OF CONTROL THE FOLLOWING STATEMENT, VERIFIED WITH AN AFFIDAVIT OR SIGNED DECLARATION UNDER 37 C.F.R. §2.20:  “The applicant publishes the goods and controls their quality.”  TMEP §1202.09(a)(ii)(B); see 37 C.F.R. §2.193(e)(1).; or

 

(3) Amending the application to seek registration on the Supplemental Register.  Trademark Act Section 23, 15 U.S.C. §1091; see 37 C.F.R. §§2.47, 2.75(a); TMEP §§816, 1202.09(a).

 

If applicant cannot satisfy one of the above requirements, applicant may amend the application from a use in commerce basis under Trademark Act Section 1(a) to an intent to use basis under Section 1(b), and the refusal will be withdrawn.  See TMEP §806.03(c).  However, if applicant amends the basis to Section 1(b), registration will not be granted until applicant later amends the application back to use in commerce by filing an acceptable allegation of use along with satisfying one of the above requirements.  See 15 U.S.C. §1051(c), (d); 37 C.F.R. §§2.76, 2.88; TMEP §1103.  If the same specimen is submitted with an allegation of use, and applicant does not either provide the additional evidence described above or amend to the Supplemental Register, the same refusal will issue.

 

To amend 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 filing date of the application.”  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), 2.193(e)(1).

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.

 

ADVISORY - PARTIAL ABANDONMENT

 

If applicant does not respond to this Office action within the six-month period for response, International Class 016 will be deleted from the application.  The application will then proceed with International Class 041 only.  See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).

 

ADVISORY - CONSENT STATEMENT

 

Based on Applicant’s response, the following consent statement has been added to the record:

 

“The name “FOO” shown in the mark identifies a living individual whose consent to register is made of record.”

 

TMEP §§813.01(a), 1206.04(b); see 37 C.F.R. §2.61(b).

 

RESPONSE GUIDELINES

 

For this application to proceed, applicant must explicitly address each refusal in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

TRADEMARK COUNSEL

 

Because of the legal technicalities and strict deadlines of the trademark application process, applicant may wish to hire a private attorney who specializes in trademark matters to assist in the process.  The assigned trademark examining attorney can provide only limited assistance explaining the content of an Office action and the application process.  USPTO staff cannot provide legal advice or statements about an applicant’s legal rights.  TMEP §§705.02, 709.06.  See Hiring a U.S.-licensed trademark attorney for more information.

 

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 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. 

 

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.    

 

 

Hansrajh, Keton

/Keton Hansrajh/

Trademark Examining Attorney

Law Office 128

(571) 272-3396

keton.hansrajh@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 13, 2019 for

U.S. Trademark Application Serial No. 88319207

 

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. 

 

 

Hansrajh, Keton

/Keton Hansrajh/

Trademark Examining Attorney

Law Office 128

(571) 272-3396

keton.hansrajh@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 13, 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.”