To: | Wang Jianhong (anthonyly@yeah.net) |
Subject: | U.S. Trademark Application Serial No. 88354153 - SPACEKEEPER - N/A |
Sent: | August 01, 2019 01:38:25 PM |
Sent As: | ecom125@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88354153
Mark: SPACEKEEPER
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Correspondence Address: |
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Applicant: Wang Jianhong
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Reference/Docket No. N/A
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) 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: August 01, 2019
This Office action is in response to applicant’s communication filed on 7/20/19.
In a previous Office action dated 5/23/19, the trademark examining attorney refused registration of the applied-for mark based on Trademark Act Sections 1 and 45, as the provided specimen was unacceptable. Additionally, applicant was required to submit information regarding its provided specimen.
The trademark examining attorney has carefully reviewed applicant’s response and substitute specimen and has determined that the refusal has not been overcome, as the specimen is not acceptable. However, applicant has satisfied the requirement to provide information about its specimen.
Accordingly, the trademark examining attorney maintains and now makes FINAL the refusal in the summary of issues below. See 37 C.F.R. §2.63(b); TMEP §714.04. All relevant arguments and evidence included with the 5/23/19 Office Action are continued, maintained, and incorporated herein.
SECTIONS 1 AND 45 REFUSAL – UNACCEPTABLE SPECIMEN
Applicant was previously refused registration in International Class 21 because the specimen consisted of a label taped to the lid of a trashcan. This was unacceptable both because it was a mock-up, and because applicant’s list of identified goods did not include trash cans. Response options for overcoming that refusal, if any, were set forth in the prior Office action. Applicant, however, responded to such refusal by submitting a substitute specimen that does not show proper use of the applied-for mark in commerce for the reasons immediately stated below. Thus, the refusal to register the applied-for mark in International Class 21 is now made final because applicant failed to provide evidence of use of the mark 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), 2.63(b); TMEP §§904, 904.07, 1301.04(g)(i).
Registration is now refused because the specimen does not show the mark in the drawing 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), 1301.04(g)(i). The mark appearing on the specimen and in the drawing must match; that is, the mark in the drawing “must be a substantially exact representation of the mark” on the specimen. See 37 C.F.R. §2.51(a)-(b); TMEP §807.12(a).
In this case, the substitute specimen displays the mark as SPACEKEEPER in a plain Times New Roman font on seller order reports from Amazon. However, the drawing displays the mark as SPACEKEEPER in a different stylized font. Thus, the mark in the substitute specimen does not match the mark in the drawing, and the applicant has therefore failed to show use of the applied-for mark in commerce. See TMEP §807.12(a).
Applicant may respond to this refusal by satisfying one of the following:
(1) Submit a new drawing of the mark that shows the mark on the specimen and, if appropriate, an amendment of the description and/or color claim that agrees with the new drawing. See 37 C.F.R. §2.72(a)-(b). Applicant may amend the mark in the drawing to match the mark on the specimen but may not make any other changes or amendments that would materially alter the drawing of the mark. See 37 C.F.R. §2.72(a)-(b); TMEP §807.14.
(2) Submit a different specimen (a verified “substitute” specimen) for each applicable international class that (a) shows the mark in the drawing in actual use in commerce for the goods and/or services in the application or amendment to allege use, and (b) 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.
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).
For more information about drawings and instructions on how to satisfy these response options online using the Trademark Electronic Application System (TEAS) form, see the Drawing webpage.
However, if applicant chooses to submit a new drawing of the mark, this alone will not obviate the Sections 1 and 45 refusal, as the substitute specimen consists of order forms from Amazon showing previous orders of goods. First, these order forms only describe kitchen organizers as goods being ordered. Applicant’s identified goods do not include kitchen organizers. Additionally, these order forms are internal documentation shown only to a seller of goods, and do not show the customer-facing interface in which consumers would see the applied-for mark. Without a specimen showing how consumers actually encounter the mark, it cannot be determined whether the applied-for mark is actually used in commerce in connection with the identified goods.
RESPONSE GUIDELINES
(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).
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).
/Kyle Ingram/
Kyle Ingram
Attorney Advisor
Law Office 125
(571)272-5276
RESPONSE GUIDANCE