UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.  A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.

 

 

ISSUE/MAILING DATE: 6/5/2019

 

 

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

SEARCH OF OFFICE’S DATABASE OF MARKS

 

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).

 

 

SUMMARY OF ISSUES:

• SPECIMEN REFUSAL – CONNECTION TO GOODS – PARTIAL
• COLOR CLAIM & MARK DESCRIPTION CLARIFICATION
• IDENTIFICATION OF GOODS AND SERVICES

 

SPECIMEN REFUSAL – CONNECTION TO GOODS

 

-        This Refusal only pertains to Classes 6 and 9.

 

Registration is refused because the specimen does not show the applied-for mark in use in commerce in International Classes 6 and 9.  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, the applicant’s specimen consists of a file named “Magazine”, but described as a “Brochure” and “Proposal”, depicting the applied-for mark, A. However, the specimen of record is not acceptable because “Magazines” and “Proposals” are not an acceptable form that shows the applied-for mark in use in commerce for goods in Class 6 and 9. 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). Thus, the specimen of record is not acceptable to show use of the mark in commerce in connection with the goods identified as: “High-voltage substation steel support structures in the nature of steel plates and towers for transmitting electricity and communications” in Class 6 and “High-voltage electrical substations comprised of components including transformers, circuit breakers, circuit switchers, voltage regulators, fuses, capacitors, relays, rectifiers, electric power converters, steel support structures and switchyards; Energy and communications facilities and infrastructure, namely, high voltage electrical substations and switchyards for distributing power; electric transmission towers” in Class 9.

 

Registration is refused because the specimen in International Class(es) 6 and 9 appears to be mere advertising material and thus the specimen fails to show the applied-for mark in 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). Advertising materials are generally not acceptable as specimens to show use in commerce for goods.  See In re Kohr Bros., 121 USPQ2d 1793, 1794 (TTAB 2017) (quoting In re Quantum Foods, Inc., 94 USPQ2d 1375, 1379 (TTAB 2010)); TMEP §904.04(b), (c).  Advertising materials may consist of the following:  online advertising banners appearing on search engine result pages and in social media; advertising circulars and brochures; price lists; listings in trade directories; and business cards.  See TMEP §904.04(b). 

 

Furthermore, registration is refused because the catalog page specimen in International Class(es) 6 and 9 is not an acceptable display associated with the goods and appears to be mere advertising material.  See TMEP §904.07(a).  The specimen, thus, fails to show the applied-for mark in use in commerce.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §2.56(a). 

 

To be acceptable, a specimen of a print catalog must include (1) a picture or sufficient textual description of applicant’s goods that (2) shows the mark associated with the goods, and (3) the information necessary to order the goods (e.g., an order form, or a telephone number, mailing address, or e-mail address for placing orders).  TMEP §904.03(h); see In re Sones, 590 F.3d 1282, 1286-89, 93 USPQ2d 1118, 1122-24 (Fed. Cir. 2009); In re U.S. Tsubaki, Inc., 109 USPQ2d 2002, 2003 (TTAB 2014).  If applicant’s specimen includes a telephone number, internet address, and/or mailing address that appears only with corporate contact information, the specimen may not show sufficient means for ordering the goods.  TMEP §904.03(h); see In re MediaShare Corp., 43 USPQ2d 1304, 1306-07 (TTAB 1997).  In that circumstance, the specimen may also need to include instructions on how to place an order or an offer to accept orders.  TMEP §904.03(h); see In re MediaShare Corp., 43 USPQ2d at 1306-07.

 

In this case, the specimen does not include a way of ordering the goods in that the consumers do not have the ability to inquire and purchase the applicant’s goods.  See In re Sones, 590 F.3d at 1286-89, 93 USPQ2d at 1122-24; In re Azteca Sys., Inc., 102 USPQ2d 1955, 1957 (TTAB 2012); TMEP §§904.03(i) et seq.  Without this feature, the specimen is mere advertising material, which is generally not acceptable as a specimen for showing use in commerce for goods.  See In re Kohr Bros., 121 USPQ2d 1793, 1794 (TTAB 2017) (quoting In re Quantum Foods, Inc., 94 USPQ2d 1375, 1379 (TTAB 2010)); In re Genitope Corp., 78 USPQ2d 1819, 1822 (TTAB 2006); TMEP §904.04(b). 

 

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 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), 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.

 

COLOR CLAIM & MARK DESCRIPTION CLARIFICATION

 

Applicant must clarify whether color is a feature of the mark because, although the drawing shows the mark in color, the application does not state whether color is a feature of the mark.  37 C.F.R. §§2.37, 2.52(b)(1), 2.61(b); see TMEP §807.07(a)-(a)(ii).

 

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

 

(1)            If color is not a feature of the mark, applicant must submit a black-and-white drawing of the mark to replace the color drawing.  See TMEP §807.07(a)(i).  However, any other amendments to the drawing will not be accepted if they materially alter the mark.  37 C.F.R. §2.72; see TMEP §§807.14 et seq.  Applicant must also submit a revised description of all literal and design elements in the mark, deleting any reference to color, if appropriate.  37 C.F.R. §2.37; see TMEP §§808.01, 808.02.  The following description is suggested, if accurate: 

 

The mark consists of the underlined wording “AGILE” in stylized font, wherein the letter “A” incorporates two waves, and below the underline is the wording “BY BETA” in stylized font below the letter “A”.

 

(2)       If color is a feature of the mark, applicant must submit a statement (a) listing all the colors that are claimed as a feature of the mark and (b) describing all the literal and design elements in the mark that specifies where each color appears in those elements.  37 C.F.R. §§2.37, 2.52(b)(1); TMEP §807.07(a)-(a)(ii).  Generic color names must be used to describe the colors in the mark, e.g., red, yellow, blue.  TMEP §807.07(a)(i)-(ii).  If black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark, applicant must so specify in the description.  See TMEP §807.07(d).  The following color claim and description are suggested, if accurate: 

 

The color(s) black and blue is/are claimed as a feature of the mark.

 

The mark consists of the black underlined wording “AGILE” in black stylized font, wherein the letter “A” incorporates two blue waves, and below the underline is the wording “BY BETA” in black stylized font below the letter “A”. The white background is not claimed as part of the mark and represents a transparent background.

 

See TMEP §807.07(b).

 

 

 

IDENTIFICATION OF GOODS AND SERVICES

 

The identification of goods and services is indefinite or contains vague wording that requires clarifications.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

For the goods highlighted below, applicant must amend this wording to specify the common commercial or generic name of the goods.  See TMEP §1402.01.  If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses.  See id.

 

For the services highlighted below, applicant must amend this wording to specify the common commercial or generic name of the services.  See TMEP §1402.01.  If the services have no common commercial or generic name, applicant must describe or explain the nature of the services using clear and succinct language.  See id.

 

Generally, a trademark examining attorney will recommend language to replace unacceptable wording in identifications of goods and/or services.  See TMEP §1402.01(e).  However, in this case, the trademark examining attorney is unable to suggest alternative wording because the wording does not appear to describe any goods and/or services in the International Class specified in the application.  See TMEP §1904.02(c)(iii). Applicant may respond by amending the highlighted wording to clarify the nature of the goods and/or services; however, any amendment to the identification must be within the scope of the wording in the initial application.  See TMEP §§1402.01(c), 1402.07(a), 1904.02(c)(iii). 

 

The wording “including” in the identification of goods and services is indefinite and must be deleted and replaced with a definite term, such as “namely,” “consisting of,” “particularly,” or “in particular.”  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03(a).  The identification must be specific and all-inclusive.  This wording is an open-ended term (e.g., “including,” “such as”) that is not acceptable because it fails to identify specific goods and services.  See TMEP §1402.03(a).

 

In the recommendations below, the examining attorney sought to offer comprehensive proposals in instances where the identification of goods or recitations of services are definite. Applicant is not required to accept these proposals, but any further changes must be within the scope of the identifications set out in the application. Please see below for a more thorough discussion.

 

Additionally, where necessary, the examining attorney has indicated where applicant must supply additional information. In such cases, the wording is presented in bold print within brackets, for example, “Computer software for {specify the functions of the programs, e.g., use in database management, use as a spreadsheet, word processing, etc. and, if software is content – or field specific, the content or field of use}.” In such a case, applicant must supply the required information within the brackets and remove the brackets from the identification.

 

Accordingly, applicant may adopt any or all of the following identification, if accurate (changes in bold):

 

 

 

·       CLASS 6: High-voltage substation steel support structures, namely, steel plates and steel frames in the form of towers for building for transmitting electricity and communications

 

 

·       CLASS 9: High-voltage electrical substations comprised of transformers, circuit breakers, circuit switchers, voltage regulators, fuses, capacitors, electric relays, rectifiers, electric power converters, steel support structures in the nature of {specify common commercial name, e.g., steel frames for building} and switchyards; Energy and communications facilities and infrastructure, namely, high voltage electrical substations and switchyards for distributing power; electric transmission towers in the nature of {specify common commercial name in this class, e.g., power-line transmission machines and apparatus}

 

 

·       CLASS 35: Business management and consultation in the fields of energy and public utilities, namely, electric outage management services; procurement namely, the purchase of energy generation, distribution and transmission systems components for others in the fields of energy and public utilities [ACCEPTABLE]

 

 

·       CLASS 37: Construction, installation, repair and maintenance of electrical substation assemblies, structural components and skid-mounted electrical substations; construction services, namely, {specify type, e.g., building} construction of {specify specific type facilities in this class, e.g., electrical substations and electrical switchyards} for conducting, switching, transforming, accumulating, regulating and controlling electricity; construction services, namely, pre-construction visualization in the nature of {specify common commercial name in this class} and planning for sequencing of construction

 

 

·       CLASS 40: custom fabrication of electrical substations, substation assemblies, structural components of {specify, e.g., electrical substations}, and skid-mounted substations

 

 

·       CLASS 42: Engineering services concerning development and planning of apparatus and instruments for conducting, switching, transforming, accumulating, regulating and controlling electricity; engineering of electrical substations; engineering of high-voltage electrical substations using pre-assembled, modular construction and lean construction techniques

 

 

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

 

For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

 

 

 

RESPONSE GUIDELINES

 

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

 

 

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.  

 

 

 

/Philip Liu/

Trademark Examining Attorney

U.S. Patent and Trademark Office

Law Office 109

(571) 272 - 6792

Philip.Liu@uspto.gov

 

TO RESPOND TO THIS LETTER:  Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application.  For technical assistance with online forms, e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned trademark examining attorney.  E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

 

All informal e-mail communications relevant to this application will be placed in the official application record.

 

WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants).  If an applicant is represented by an attorney, the attorney must sign the response. 

 

PERIODICALLY CHECK THE STATUS OF THE APPLICATION:  To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/.  Please keep a copy of the TSDR status screen.  If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199.  For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

 

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 6/5/2019 FOR U.S. APPLICATION SERIAL NO. 88351913

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 6/5/2019 (or sooner if specified in the Office action).  A response transmitted through the Trademark Electronic Application System (TEAS) must be received before midnight Eastern Time of the last day of the response period.  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the TEAS response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.