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:  January 30, 2020

 

INTRODUCTION

 

The Office has reassigned this application to the undersigned Trademark Examining Attorney.

 

This Office action is supplemental to and supersedes the previous Office action issued on May 23, 2019 in connection with this application.  Based on information and/or documentation in Applicant’s response, the Trademark Examining Attorney now issues the following NEW requirements:  Additional information about the specimen is required and attorney bar credentials are required.  See TMEP §§706, 711.02. 

 

In a previous Office action dated May 23, 2019, the Trademark Examining Attorney refused registration of the applied-for mark based on the following:  Trademark Act Sections 1 and 45 for submitting a mock-up specimen and, thus, failure to show the applied-for mark in use in commerce with any of the specified goods. 

 

SUMMARY OF ISSUES TO WHICH APPLICANT MUST RESPOND:

 

• Sections 1 and 45 Refusal & RFI– Digitally Created/Mock-Up Specimen
• Attorney Bar Credentials Required

 

Applicant must respond to all issues raised in this Office action within six (6) months of the date of issuance of this Office action.  37 C.F.R. §2.62(a); see TMEP §711.02.  If Applicant does not respond within this time limit, the application will be abandoned.  37 C.F.R. §2.65(a).

 

SECTIONS 1 AND 45 REFUSAL & RFI –

DIGITALLY CREATED/MOCK-UP SPECIMEN

 

Specimen refused.  Registration is refused because the specimen in International Class 14 appears to consist of a digitally altered image or a mock-up of the mark on the goods or their packaging and does not show the applied-for mark in actual use 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); TMEP §§904, 904.07(a). 

 

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. 15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).  “Use in commerce” means (1) a bona fide use of the applied-for mark in the ordinary course of trade (and not merely to reserve a right in the mark), (2) the mark is placed in any manner on the goods, packaging, tags or labels affixed to the goods, or displays that directly associate the mark with the goods and have a point-of-sale nature, and (3) the goods are actually sold or transported in commerce.  See 15 U.S.C. §1127.

 

An image of a product or packaging that has been digitally created or otherwise altered to include the mark does not show actual use of the mark in commerce.  See 15 U.S.C. §1127; TMEP §§904.04(a), 904.07(a); cf. In re Chica, Inc., 84 USPQ2d 1845, 1848 (TTAB 2007) (holding that “a mere drawing of the goods with an illustration of how the mark may be displayed” was not an acceptable specimen because it did not show actual use in commerce); In re The Signal Cos., 228 USPQ 956, 957-58 n.4 (TTAB 1986) (noting that a printer’s proof of an advertisement would not be an acceptable specimen because it does not show actual use in commerce).

 

In this case, the original specimen depicts a box with the mark taped on the front. While Applicant indicated that this was product packaging for earrings, the manner in which the mark appears on the box – with temporary tape – appears to depict a mock-up of product packaging, and not a presentation of customary use in commerce of marks with similar goods. Similarly, the substitute specimen appears to be a mock-up as it depicts a box covered with colored paper that has been taped thereon. Again, this is not a presentation of customary use in commerce of marks with similar goods and registration must be refused.

 

Additional information/documentation required.  To permit proper examination of the application record for compliance with use in commerce requirements, Applicant must respond to the following requests for information and documentation about the specimen.  See 37 C.F.R. §2.61(b); TMEP §814.  Answer for each specimen/photograph/image previously provided.  For any website source submitted as supporting evidence, provide a digital copy of the entire webpage from top to bottom, as rendered in an Internet browser, that includes the URL and access or print date.  TMEP §710.01(b) (citing In re I-Coat Co., 126 USPQ2d 1730, 1733 (TTAB 2018)).

 

(1)        Identify the particular goods listed in the application for which the specimen was submitted to show use of the mark.

 

(2)        Was the specimen created for submission with this application?  If so, specify the date each specimen was created.  If Applicant obtained the images of the goods shown in the specimen from a third-party website, provide the URL of the website and a digital copy of relevant webpages for each image.

 

(3)        Provide information about and examples of how Applicant’s goods appear in the actual sales environment.

 

(a)        If sold in stores, provide a representative sample of the names of the stores and of photographs showing the goods for sale in the named stores, such as photographs of the sales displays or goods on shelves with the mark. 

(b)        If sold online, provide a representative sample of the names of the online retailers, the website URLs for each named retailer, and a digital copy of the webpages showing the goods for sale on the named website.

(c)        If sold in another type of sales environment (e.g., catalogs, trade shows), identify the environment and provide photographs and/or documentation showing the goods for sale in that environment. 

 

(4)        If the information in question (3) about how the goods appear in the actual sales environment is not available to Applicant, please describe how Applicant’s goods are sold or transported and provide photographs and other documentation showing how Applicant’s mark appears on the goods and/or its packaging when the goods are sold or transported to or within the United States.

 

(5)        For each category of sales environment specified in response to questions (3) and (4), specify when the goods bearing the mark were first available for purchase within the United States, the date of the first sale of the goods to or within the United States, and whether the goods are still for sale to or within the United States in that environment.

 

(6)        For the goods identified in response to question (1), specify the dollar amount of sales with or within the United States and provide at least three invoices or other supporting documentation that show payments or other consideration made, redacting personal or private information of buyers as necessary.

 

Response options.  Applicant may respond to the refusal of registration due to the specimen’s failure to show actual use in commerce by amending the filing basis to allege intent to use the mark in commerce, for which no specimen is required now.  See 37 C.F.R. §2.34.  This option will later necessitate additional fees and filing requirements such as providing a specimen. 

 

Alternatively, Applicant may also respond to the refusal by submitting 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 and (b) shows the mark in actual use in commerce for the goods identified in 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) 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. 

 

For an overview of these response options and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, see the Specimen webpage.

 

If Applicant submits a verified substitute specimen, Applicant must also fully respond to all the requirements for information and documentation.  Failure to comply with a requirement to furnish information is grounds for refusing registration.  In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.  Merely stating that evidence is available on Applicant’s or a third party website or providing a hyperlink of such a website is an insufficient response and will not make the additional information or materials of record.  See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).  However, amending the application filing basis to intent-to-use under Section 1(b) will resolve the requirements for information and documentation.

 

ATTORNEY BAR CREDENTIALS REQUIRED

 

The application record indicates that Applicant is represented by Wayne V. Harper, but the correspondence information provided for this person does not appear to match the known correspondence information for Mr. Harper.  For that reason, the USPTO requires additional confirmation that Applicant’s appointed attorney is authorized to practice before the USPTO and is the person who signed the previous response.  See 37 C.F.R. §11.14(a); TMEP §§602 et seq.  Only attorneys who are active members in good standing of the bar of a highest court of a U.S. state (including the District of Columbia or any U.S. commonwealth or territory) may practice before the USPTO in trademark matters.  37 C.F.R. §§2.17(a), 11.14; TMEP §§602.01-.03.  Accordingly, Applicant must provide proof of the named attorney’s good standing with the designated bar.  Such proof must be in the form of either (i) a certificate of good standing from the state bar that is less than 1 year old or (ii) a photocopy of the named attorney’s bar membership card and a dated screenshot from the state bar’s website showing the named attorney is in good standing.  See 37 C.F.R. §§2.17(b)(3), 2.61(b).

 

If the originally submitted attorney bar information is incorrect, Applicant’s attorney must specify the correct bar information and provide supporting documentation showing the attorney’s active bar membership in good standing.  37 C.F.R. §§2.17(b)(3), 2.61(b).  Otherwise, Applicant may appoint or designate a different attorney who is qualified to practice before the USPTO under 37 C.F.R. §11.14.  See 37 C.F.R. §2.17(a). Please note that if Applicant appoints or designates a different attorney, proof of bar credentials as set forth in the preceding paragraph is required for the new attorney.

 

Failure to comply with this requirement is grounds for refusing registration.  In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.  Merely stating that the attorney’s bar information is available on a state bar’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).

 

To provide attorney bar credentials or to change bar information.  Open the correct TEAS response form and enter the serial number, answer “yes” to wizard question #3, and on the “Additional Statement(s)” page in the “Miscellaneous Statement” field (1) explain the documentation provided and (2) click the button below the text box to attach evidence.  To change attorney bar information, go to the “Attorney Information” page of the form and update the bar information section.  Bar information provided in any other area of the form will be viewable by the public in USPTO records.

 

HOW TO RESPOND

 

For this application to proceed, Applicant must explicitly address each refusal and requirement 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.  For a requirement, Applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

Click to file a response to this nonfinal Office action.    

 

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 and requirements 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.  

 

/Samantha Sherman/

Examining Attorney

Law Office 123

571-270-0903

samantha.sherman@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 Applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon. 

 

• 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 January 30, 2020 for

U.S. Trademark Application Serial No. 88330890

 

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. 

 

 

Samantha Sherman

/Samantha Sherman/

Examining Attorney

Law Office 123

571-270-0903

samantha.sherman@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 January 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.”