To: | SharkNinja Operating LLC (docket@innislaw.com) |
Subject: | U.S. Trademark Application Serial No. 88376172 - UPLIGHT - N/A |
Sent: | May 11, 2020 01:20:28 PM |
Sent As: | ecom126@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88376172
Mark: UPLIGHT
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Correspondence Address: |
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Applicant: SharkNinja Operating LLC
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Reference/Docket No. N/A
Correspondence Email Address: |
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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: May 11, 2020
SUMMARY OF ISSUES:
SPECIMEN REFUSAL
Webpage specimen does not include required URL and/or date printed/accessed. Registration is refused because the specimen is not acceptable as a webpage specimen; it lacks the required URL and/or date printed/accessed. See 37 C.F.R. §2.56(c); Mandatory Electronic Filing & Specimen Requirements, Examination Guide 1-20, at V.B. (Rev. Feb. 2020). The specimen thus appears to be in the nature of a digital mockup that fails to 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), (c); see TMEP §§904, 904.03(g), 904.07(a). An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark as actually used in commerce for each international class of goods and services identified in the statement of 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).
A webpage submitted as a specimen must include the URL and access or print date to show actual use in commerce. 37 C.F.R. §2.56(c). Because the webpage specimen lacks the associated URL and/or access or print date on it, within the TEAS form used to submit the specimen, or in a verified statement in a later-filed response, it is unacceptable to show use of the mark in commerce.
Examples of specimens. Specimens for goods include a photograph of (1) the actual goods bearing the mark; (2) an actual container, packaging, tag or label for the goods bearing the mark; or (3) a point-of-sale display showing the mark directly associated with the goods. See 37 C.F.R. §2.56(b)(1), (c); TMEP §904.03(a)-(m). A webpage specimen submitted as a display associated with the goods must show the mark in association with a picture or textual description of the goods and include information necessary for ordering the goods. TMEP §904.03(i); see 37 C.F.R. §2.56(b)(1), (c).
Response options. Applicant may respond to this refusal by satisfying one of the following for each applicable international class:
(1) Submit a verified statement, in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20 or 28 U.S.C. §1746, specifying the URL of the original webpage specimen and the date it was accessed or printed.
(2) Submit a different specimen (a verified “substitute” specimen) including the URL and date accessed/printed on it, that (a) was in actual use in commerce prior to the expiration of the deadline for filing the statement of use and (b) shows the mark in actual use in commerce for the goods and/or services identified in the statement of use. Applicant must also submit 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 prior to expiration of the filing deadline for filing a statement of use.”
Applicant may not withdraw the statement of use. See 37 C.F.R. §2.88(f); TMEP §1109.17.
For an overview of the response options referenced above and instructions on how to satisfy these options using the online Trademark Electronic Application System (TEAS) form, see the Specimen webpage.
Applicant should note the advisory below.
IMPROPERLY SIGNED REVOCATION OF POWER OF ATTORNEY
A revocation of power of attorney was filed on September 13, 2019 to change the correspondence address; however, it was not properly signed by applicant or someone with legal authority to bind applicant. See 37 C.F.R. §§2.18(c), 2.19(a)(1), 2.193(e)(3), (e)(9)(ii); TMEP §§606, 611.03(c), (i).
In this case, the party who signed the document is William B. Lacy, Group Lead, Global IP/Associate General Counsel, who does not have legal authority to bind the juristic applicant because this individual’s title does not indicate he is a corporate officer. See TMEP §611.04.
Where a document must be signed by someone with legal authority to bind a corporation, a corporate officer must sign. An officer is a person who holds an office established in the articles of incorporation or corporate bylaws. The usual titles for officers are President, Vice-President, Secretary, Treasurer, Chief Executive Officer, Chief Operating Officer, and Chief Financial Officer. In some organizations, the Treasurer is called a Comptroller or Controller, and these terms are acceptable. TMEP §§606, 611.06(d).
Applicant is already represented by a qualified practitioner, and if a new qualified practitioner wishes to take action with respect to the application, the new qualified practitioner must file a new power of attorney or revocation of the previous power, signed by someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner of a partnership). Thus, the USPTO will not process the revocation of power of attorney and the correspondence name, postal address, and email address will remain unchanged. See 37 C.F.R. §2.19(a)(1)-(2); TMEP §609.02(a).
RESPONSE INFORMATION
Please call or email the assigned trademark examining attorney with questions about this Office action. Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action. See TMEP §§705.02, 709.06.
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
How to respond. Click to file a response to this nonfinal Office action.
/Cheryl Kluwe/
Cheryl Kluwe
Examining Attorney
Law Office 126
(571) 270-3839
cheryl.kluwe@uspto.gov
RESPONSE GUIDANCE