| To: | Ikan International (james@ikancorp.com) |
| Subject: | U.S. TRADEMARK APPLICATION NO. 88363636 - IKAN - N/A |
| Sent: | 6/13/2019 6:32:15 PM |
| Sent As: | ECOM116@USPTO.GOV |
| Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
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U.S. APPLICATION SERIAL NO. 88363636
MARK: IKAN
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Ikan International
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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: 6/13/2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SEARCH OF OFFICE DATABASE
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).
SPECIMEN OF USE REQUIREMENT
Registration is refused because the specimens appear 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). Specifically, applicant submitted a business card and promotional sticker which are advertising materials.
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).
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).
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 the Specimen webpage.
IDENTIFICATION OF GOODS REQUIREMENTS
THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE GOODS SPECIFIED THEREIN
Applicant may adopt all or part of the following identification, if accurate. The suggested amendments appear in bold:
International Class 9: Audio and video cassette recorders; Audio and video recordings about tennis; Audio and video recordings featuring music and artistic performances; Audio-receivers and video-receivers; Audio-video receivers; Blank CD-ROMs for sound or video recording; Blank video cassettes; Blank video tapes; Building security systems comprising software and hardware for providing picture, video, alarm status, building plans, and other information to a remote station; Camera stability accessory, namely, a support arm, vest and sled for film and video cameras to absorb shaking moves while shooting; Cameras for self-developing film; Car video recorders; Children's video tapes; Cleaning discs for cleaning the lens of optical disc drives used in computers and digital video recorders; Color filters for television and motion picture film cameras; Color separation film; Combination video players and recorders; Component video cables; downloadable computer game software for gaming machines including slot machines or video lottery terminals; downloadable computer game software for gaming machines, namely, slot machines and video lottery terminals; downloadable computer game software for personal computers and home video game consoles; downloadable computer game software for use with personal computers, home video game consoles used with televisions, and for arcade-based video game consoles; downloadable computer hardware for communicating audio, video and data between computers via a global computer network, wide-area computer networks, and peer-to-peer computer networks; Computer hardware for IP video surveillance; downloadable computer programs for editing images, sound and video; downloadable computer programs for video and computer games; downloadable computer software and computer hardware for use in language localization, by means of language translation, subtitling, dubbing, closed captioning and teletext for feature films, television programs, videos and digital media in general; downloadable computer software and downloadable firmware for games of chance on any computerized platform, including dedicated gaming consoles, video based slot machines, reel based slot machines, and video lottery terminals; downloadable computer software featuring musical sound recordings and musical video recordings; downloadable computer software for controlling the operation of audio and video devices; downloadable computer software for use in the encryption and decryption of digital files, including audio, video, text, binary, still images, graphics and multimedia files; downloadable computer software for use in the safeguarding of digital files, including audio, video, text, binary, still images, graphics and multimedia files; downloadable computer software, namely, game engine software for video game development and operation; Consumer electronic products, namely, audio amplifiers, audio speakers, audio receivers, electrical audio and speaker cables and connectors, audio decoders, video decoders, speakers, power conversion devices, power converters, and power inverters; Contingency response communication system designed to provide radio interoperability, streaming video, wireless internet, and VOIP phone; Control system for the remote observation, management and operation of cranes, comprising computers, downloadable control software, electromechanical controls, and video display screens; Digital audio and video recorders and players; Digital film scanners; Digital photo frames for displaying digital pictures, video clips and music; Digital video cameras; Digital video disc drives; Digital video recorders; Distribution amplifiers for audio and video signals; Downloadable audio files, multimedia files, text files, e-mails, written documents, audio material, video material and games featuring information in the form of downloadable short educational/training communications in the field of human resource development for the promotion of employee retention, career growth and increased productivity for employees and employers; Downloadable image file containing artwork, text, audio, video, games and Internet Web links relating to sporting and cultural activities; Drum units for printers, facsimile machines, scanners, copying machines and multifunction electronic devices for use in copying, printing, scanning, video capture and/or transmitting documents and images; Editing appliances for cinematographic films; Electric and electronic video surveillance installations; Electronic equipment, namely, transformers, baluns, cables used in connection with computers, computer peripheral devices, televisions, audio-video equipment in the nature of cables, closed-circuit TV equipment in the nature of cameras and telecommunication equipment, namely, phones; downloadable electronic game software, namely, an electronic video craps game; Electronic interconnecters for audio and video signals; Electronic scalers for audio and video signals; Electronic switchers for audio and video signals; Electronic video surveillance products, namely, electronic components of security systems; Exposed camera film; Exposed cinematographic film; Exposed cinematographic films; Exposed slide films; Exposed X-ray film; Film cameras; Film portrait cameras; Fitted plastic films known as skins for covering and providing a scratch proof barrier or protection for electronic devices, namely, MP3 players, mobile telephones, smart telephones, digital cameras, global positioning systems and personal digital assistants; Head cleaning tapes for video recorder; Head-mounted video displays; Integrated circuits, integrated circuit chips, and integrated circuit modules for digital video compression and decompression; Integrated circuits, integrated circuit chips, and integrated circuit modules for encoding and decoding digital video; downloadable interactive multimedia software featuring audio and video information for dentists on the subject of treatments, procedures and alternatives related to dentistry; downloadable interactive multimedia software featuring audio and video information for patients on the subject of treatments, procedures and alternatives related to dentistry; downloadable interactive music manuscript in multimedia video game software format; downloadable interactive video game program, namely, a video craps game; downloadable interactive video game programs; downloadable interactive video games of virtual reality comprised of computer hardware for use with an external monitor and software; Interface circuits for video cameras; Internet digital video recorders; Interoperable communication system designed to provide radio, streaming video, wireless internet, and VOIP phone; IP video servers; Jackets for video cassettes; Lights for use on video cameras; Matrix switchers for audio and video signals; Metal depository containing a video camera, display screen, touch screen user interface and access card reader to record deposits; Motion picture films and films for television featuring children's entertainment; Motion picture films featuring children's entertainment; Motion-picture cameras for self-developing film; Multifunction electronic devices for use in copying, printing, scanning, video capturing and/or transmitting documents and images; Musical video recordings; Optical discs containing software and programming, used to set-up and calibrate televisions and video output devices; Optical fibres, telephone receivers, switchboards, telephone and telegraph wires, video telephones; PC digital video recorders; Port security and shipping container scanning system comprising electronic x-ray scanners, video cameras and recorders, and GPS transceivers; Portable video cameras with built-in videocassette recorders; Prerecorded video cassettes featuring music; Prerecorded video tapes featuring music; Projection screens for movie films; Recordable compact disks and digital video disks with printable upper surfaces on which text or graphics can be directly printed; Remotely-controlled sub-aquatic video camera containing a TV camera, transmitter, receiver and microphone to record, detect, measure, survey and locate objects underwater; Slide film mounts; Sound and video recording and playback machines; Telecommunications and data networking hardware, namely, devices for transporting and aggregating voice, data, and video communications across multiple network infrastructures and communications protocols; television and video converters; Televisions and video recorders; Thin film switches; Thin-film solar (TFS), vertical axis wind turbine (VAWT) and Hybrid TFS VAWT off-grid power and deep cycle battery storage systems composed of batteries, charge controllers and inverters with integrated LED bulbs and LED light fixtures; Transmitters and receivers for audio and video signals for transmission over twisted pair cables; Vehicle detection equipment, namely, display monitors, computers, image sensors, video cameras, and downloadable operating system and downloadable application software to detect vehicle location; downloadable video and computer game programs; Video cables; Video cameras; Video capture cards; Video cassette recorders; Video cassette recorders and players, compact disc players, digital audio tape recorders and players, electronic diaries; Video circuit boards; Video disc players; Video disk players; Video disks and video tapes with recorded animated cartoons; Video display cards; Video displays mounted in eyeglasses; Video displays that may be worn on the body; Video game cartridges; Video game cartridges and cassettes; Video game cartridges and discs; Video game discs; Video game software; Video game software, namely, a video craps game; Video game tape cassettes; Video graphics accelerator; Video graphics controller; Video injection system, namely, optical and electronic hardware and recorded computer software, simulating the effects of tracer round fly-outs and bursts on target, which allows for on-vehicle precision gunnery without expending actual ammunition; Video lottery terminals; Video monitors; Video multiplexers; Video phones; Video processors; Video projectors; Video receivers; Video recorders; Video recorders and video reproducing apparatus; Video screens; Video tape recorders; Video telephones; Video transmission apparatus; Video-telephones; Videotapes and video disks recorded with animation; Viewing devices, namely, digital photograph viewers, 3D digital photograph viewers, underwater digital photograph viewers, underwater 3D digital photographs viewers, underwater LCD displays, underwater enclosures for LCD displays and underwater enclosures for video players; Wireless communication device featuring voice, data and image transmission including voice, text and picture messaging, a video and still image camera, also functional to purchase music, games, video and software applications over the air for downloading to the device; Wireless television set for providing video conferencing and telephone service over the Internet
International Class 28: Amusement apparatus and games adapted for use with television receivers or with video or computer monitors; Computerized video game tables for gaming purposes, namely, a computerized video craps game table; Computerized video table games for gaming purposes; Electronic and electro-mechanical gaming tables with video output; Electronic and video game controllers incorporated into exercise machines; Face plates for video game consoles for use with external monitors; Fitted covers specially adapted to protect video game consoles for use with an external display screen or monitor; Gaming devices, namely, gaming machines, slot machines, bingo machines, with or without video output; Gaming equipment, namely, slot machines with or without video output; Gaming machines including slot machines or video lottery terminals; Gaming machines, namely, slot machines and video lottery terminals; Hand held joy stick units for playing video games; Joysticks for video games; Player-operated electronic controllers for electronic video game machines; Protective carrying cases specially adapted for video game consoles for use with an external display screen or monitor; Stand alone video gaming machines, namely, a video craps game machine; Video game consoles for use with an external display screen or monitor; Video game interactive control floor pads or mats; Video game interactive hand held remote controls for playing electronic games; Video game interactive remote control units; Video game joysticks; Video game machines for use with external display screen or monitor; Video game machines for use with televisions; Video output game machines for use with external display screen or monitor; Video output game machines for use with televisions
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).
(2) Submit a filing fee for each international class not covered by the fees already paid (view the USPTO’s current fee schedule). Specifically, the application identifies goods based on use in commerce that may be classified in at least two classes; however, applicant submitted a fee sufficient for only one class. Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.
(3) Submit verified dates of first use of the mark anywhere and in commerce for each international class. See more information about verified dates of use.
(4) Submit a specimen for each international class. See more information about specimens.
Examples of specimens for goods include tags, labels, instruction manuals, containers, and photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale. 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.
(5) Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.” See more information about verification.
See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
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.
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.
/Khanh M. Le/
Trademark Examining Attorney
Law Office 116
U.S. Patent & Trademark Office
Khanh.Le@USPTO.gov
(571) 272-9435
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.