| To: | Xisheng Xiamenxinxikejiyouxiangongsi (zdip@qq.com) |
| Subject: | U.S. Trademark Application Serial No. 88392751 - AJA - N/A |
| Sent: | September 05, 2019 12:34:24 PM |
| Sent As: | ecom121@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. 88392751
Mark: AJA
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Correspondence Address: XISHENG XIAMENXINXI; XISHENG XIAMENXINXI |
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Applicant: Xisheng Xiamenxinxikejiyouxiangongsi
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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). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: September 05, 2019
This Office action is supplemental to and supersedes the previous Office action issued on July 08, 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 and refusals: Specimen Does Not Show Mark In Commerce, Attorney Information Required, and Request For Information – Additional Specimens Required. See TMEP §§706, 711.02.
In a previous Office action dated July 08, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following: specimen appears to be digitally altered. In addition, applicant was required to satisfy the following requirement(s): provide information about the specimen.
Based on applicant’s response, the trademark examining attorney notes that none of refusals or requirements have been withdrawn. See id.
The following is a SUMMARY OF ISSUES that applicant must address:
Applicant must respond to all issues raised in this Office action and the previous July 08, 2019 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).
ATTORNEY INFORMATION REQUIRED
Applicant must be represented by a U.S.-licensed attorney. The application record indicates that applicant’s domicile is outside of the United States in China, but no attorney who is an active member in good standing of the bar of the highest court of a U.S. State or territory has been appointed to represent the applicant in this matter. All applicants whose permanent legal residence or principal place of business is not within the United States or its territories must be represented by a U.S.-licensed attorney at the USPTO. 37 C.F.R. §§2.2(o), 2.11(a). Thus, applicant is required to be represented by a U.S.-licensed attorney and must appoint one. 37 C.F.R. §2.11(a). This application will not proceed to registration without such appointment and representation. See id. See Hiring a U.S.-licensed trademark attorney for more information.
To appoint or designate a U.S.-licensed attorney. To appoint an attorney, applicant should (1) submit a completed Trademark Electronic Application System (TEAS) Revocation, Appointment, and/or Change of Address of Attorney/Domestic Representative form and (2) promptly notify the trademark examining attorney that this TEAS form was submitted. Alternatively, if applicant has already retained an attorney, the attorney can respond to this Office action by using the appropriate TEAS response form and provide his or her attorney information in the form and sign it as applicant’s attorney. See 37 C.F.R. §2.17(b)(1)(ii).
SPECIMEN DOES NOT SHOW MARK IN COMMERCE
Registration is refused because the specimen does not show the applied-for mark in use in commerce in International Class 018. 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 specimen shows the website as delivering to Hong Kong and therefore does not show the mark in lawful commerce in the United States.
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.
REQUEST FOR INFORMATION – ADDITIONAL SPECIMENS REQUIRED
The application includes widely varied goods, e.g., “Animal harnesses” and “Rucksacks.” However, the specimen only shows use in commerce for Rucksacks. Therefore, to permit proper examination of the application, applicant must submit additional specimen showing the mark in use in commerce for other goods listed in the identification, namely, animal harnesses, athletic bags, backpacks for pets, clutch bags, daypacks, garments for pets, pocketbooks, satchels, straps for holdalls, sunshade parasols, tote bags, and traveling bags. See 37 C.F.R. §2.61(b); TMEP §814.
With broad identifications, as with any identification that includes more than one item, the amount of proof (normally by way of specimens) necessary to assure the examining attorney that the mark has been used on “all” the items in the application will vary. See TMEP §904.01(a). The USPTO does not require specimens showing use of the mark for every item set forth in an application. However, if an identification is broad or so extensive that it encompasses a wide range of products or services, the applicant may be required to submit evidence that it actually uses the mark on a wide range of products or services to obtain registration. 37 C.F.R. §§2.56(a), 2.86(a)(3), (b)(3), and (e). See In re Air Products & Chemicals, Inc., 192 USPQ 84, recon. denied 192 USPQ 157 (TTAB 1976). See TMEP §1402.05 regarding accuracy of the identification.
Failure to comply with a request for information is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814. Merely stating that information is available on applicant’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).”
SPECIMEN APPEARS TO BE DIGITALLY ALTERED
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). “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 bag appears to have had the mark digitally placed on the goods and the mark appears to float over the product. In addition, some of the images include pixelization around the mark and are on the whole blurry. Therefore, the submitted specimen cannot be accepted.
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 fee(s) 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 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.
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.
REQUEST FOR INFORMATION
To permit proper examination of the application, applicant must provide the following information:
1. Applicant must specifically state for the record whether it has used its proposed mark on the identified goods continuously in commerce regulated by the United States since the application filing date.
2. For each specimen submitted, applicant must clearly provide the common commercial name for the goods to which such specimen relates in order to permit proper examination of the goods.
3. Applicant must specifically state for the record whether the goods shown by the specimen submission or submissions actually bear the proposed mark in the exact manner shown when sold in U.S. commerce.
4. Applicant must describe how the specimen submission or submissions were selected or obtained in order to be used as specimens of use in the filing of this application.
5. Applicant must provide evidence of the retail, wholesale, or other sales environment in which the goods are sold, including submitting addresses and contact information for confirmation purposes.
6. Applicant must submit copies of invoices, bills of sale, or other documentation of sales in U.S. commerce of the listed goods in this application bearing the proposed mark, redacting personal or private information of buyers, as necessary.
7. If the goods shown in the specimen or specimens with the proposed mark are sold in physical stores, applicant must provide unedited digital images or photographs showing the goods bearing the proposed mark in store locations, the time and date taken, and the address of the store location. If these goods are sold in another type of sales environment, applicant must provide evidence showing the goods for sale in that environment, and provide the address of any physical location.
8. If relevant, please provide a detailed explanation on how applicant’s goods are transported for sale and provide documentation or other evidence showing how the proposed mark appears on the goods and/or its packaging when the goods are being transported for sale.
9. If these goods are available for sale online, applicant must provide images of websites showing the goods for sale in direct association with the proposed mark, including the complete URL address of the website shown so that it can be accessed by the USPTO to permit proper and complete examination of this application. For each webpage submission, either as a specimen or as supporting evidence, applicant must provide a digital copy of the entire webpages (including URL) from top to bottom, as rendered in an Internet browser, to permit proper and complete examination of this application and an accurate record of the entirety of the webpage submission.
10. If applicable, applicant must provide images of all sides of the packaging shown in the boxed specimen submission or submissions.
11. If applicable, applicant must provide the size and dimensions of the box or boxes shown in the specimen submission or submissions.
12. If applicable, applicant must explain if it has any manufacturing relationship with the manufacturer(s) whose website(s) or other electronic display(s) of its goods is/are attached, as this evidence shows the same goods presented in the identical manner, and if it does, please explain the relationship.
See 37 C.F.R. §§2.32(a)(9)-(a)(10), 2.61(b); TMEP §§809-809.03, 814.
Failure to comply with a request for information is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.
For this application to proceed, applicant must explicitly address each refusal and/or 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.
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 nonfinal Office action
/Christopher Renneker/
Examining Attorney
Law Office 121
571-272-8045
christopher.renneker@uspto.gov
RESPONSE GUIDANCE