To: | The Best Industries (docket@trademarklawyerfirm.com) |
Subject: | U.S. Trademark Application Serial No. 88399731 - SOUNDBOSS - N/A |
Sent: | September 17, 2019 11:17:11 AM |
Sent As: | ecom116@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88399731
Mark: SOUNDBOSS
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Correspondence Address: TRADEMARK LAWYER LAW FIRM, PLLC
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Applicant: The Best Industries
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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: September 17, 2019
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.
This Office action is in response to applicant’s communication filed on August 16, 2019.
Refusal – Specimen
Applicant was previously refused registration because the original specimen appeared to consist of a digitally altered image or a mock-up of the intended depiction of the mark on the goods or their packaging for future use in commerce. 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 and/or services 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).
In response to each refused international class, applicant provided a substitute specimen comprising a purported listing of the goods on Amazon.com. The substitute specimen appears to have been created for submission with the response and does not show the applied-for mark in actual use in commerce because the attached printout from Amazon.com shows that no listing of the applicant’s goods exists. Actual “use in commerce” occurs when the mark is placed on the goods or their containers in the ordinary course of trade and the goods are actually sold or transported, and not merely to reserve a right in the mark. See 15 U.S.C. §1127; TMEP §901.01.
A digitally altered image, mock-up, or photograph of an intended depiction of a mark on a label, tag, or piece of paper placed on top of an applicant’s or a third party’s goods or packaging merely for the purposes of filing a trademark application is generally not acceptable to show applicant’s use of the applied-for mark in commerce. See 15 U.S.C. §1127; TMEP §§904.03(a), 904.04(a), 904.07(a); cf. In re Chica, Inc., 84 USPQ2d 1845, 1848 (TTAB 2007); In re The Signal Cos., 228 USPQ 956, 957-58 n.4 (TTAB 1986). Applicant must show the mark used on applicant’s goods or packaging as it is seen by the purchasing public, with goods that are sold or transported in commerce that is regulated by the U.S. Congress. See 15 U.S.C. §1127; TMEP §901.01.
Applicant may respond to this final 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 and/or services 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 the filing of an acceptable specimen when actual use of the mark in the sale or transport of goods occurs.
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.
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)
/Linda King/
Examining Attorney
Law Office 116
571-272-9180
Linda.King@uspto.gov
RESPONSE GUIDANCE