To: | Gimlet Media Inc. (drwtrademarks@wolfgreenfield.com) |
Subject: | U.S. Trademark Application Serial No. 88327533 - MOTHERHOOD SESSIONS - G08892001700 |
Sent: | November 16, 2019 12:43:13 PM |
Sent As: | ecom106@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88327533
Mark: MOTHERHOOD SESSIONS
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Correspondence Address: WOLF, GREENFIELD & SACKS, P.C.
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Applicant: Gimlet Media Inc.
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Reference/Docket No. G08892001700
Correspondence Email Address: |
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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: November 16, 2019
The referenced application and amendment to allege use have been reviewed by the assigned trademark examining attorney. The amendment to allege use satisfies the minimum filing requirements under 37 C.F.R. §2.76(c); however, it does not satisfy all statutory requirements. See TMEP 1104.10. Therefore, applicant must respond timely and completely to the issue(s) below related to the application and amendment to allege use. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03, 1104.10(a).
Please note that the Trademark Act Section 2(e)(1) refusal has been obviated by the amendment to the Supplemental Register. However, if the applicant withdraws the amendment to allege use, the application cannot proceed on the Supplemental Register. In that instance, issues pertaining to the ineligible amendment to the Supplemental Register must be raised.
SUMMARY OF ISSUES THAT APPLICANT MUST ADDRESS
ACCEPTABLE SPECIMEN OF USE REQUIRED – CLASS 41
Specifically, the applicant seeks registration of downloadable audio recordings, an International Class 9 good, and International Class 41 entertainment services. The applicant submitted the same specimen of use for both classes. Downloadable recordings, television programs, and podcasts are classified in International Class 9 and it appears that the recordings accessed via the application depicted on the specimen of use are downloadable (the examining attorney refers to the downward facing arrow in the circle for each video). Accordingly, as the recordings appear to be downloadable, the specimens show use for the International Class 9 goods, not the International Class 41 services. Please note, however, that if the recordings are not downloadable, the specimens of use would be acceptable for International Class 41, but not International Class 9.
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(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).
Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and webpages that show the mark used in the actual sale, rendering, or advertising of the services. See TMEP §1301.04(a), (h)(iv)(C). Specimens comprising advertising and promotional materials must show a direct association between the mark and the services. TMEP §1301.04(f)(ii).
Applicant may respond to this 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 and/or services 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), 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.
ADDITIONAL INFORMATION REQUIRED
To permit proper examination of the application, applicant must respond to the following questions:
* Are the videos that can be played using the app depicted on the specimens of use submitted on October 28, 2019, downloadable?
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.
QUESTIONS REGARDING THE INSTANT OFFICE ACTION
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
/Martha L. Fromm/
Trademark Examining Attorney
United States Patent & Trademark Office
Law Office 106
571-272-9320
Martha.Fromm@USPTO.gov
RESPONSE GUIDANCE