To: | 7-Eleven, Inc. (allison.mcdade@7-11.com) |
Subject: | U.S. Trademark Application Serial No. 88401735 - SOUTHLAND - TM5242 |
Sent: | March 19, 2020 09:22:00 PM |
Sent As: | ecom121@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88401735
Mark: SOUTHLAND
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Correspondence Address:
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Applicant: 7-Eleven, Inc.
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Reference/Docket No. TM5242
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: March 19, 2020
The statement of use has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SPECIMEN REFUSAL
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 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), 1301.01 et seq. “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 used in the sale, advertising, or rendering of the services, and (3) the services are actually rendered in commerce. See 15 U.S.C. §1127.
An image of business signage, such as on a storefront or delivery van, or a webpage that has been digitally created or altered to include the mark, or a mockup of how the mark may be displayed, is not a proper specimen for services because it does not show actual use of the mark in commerce. Similarly, a website showing the mark for the services that applicant is not currently engaged in selling, advertising, or rendering is not a proper specimen. See 15 U.S.C. §1127; 37 C.F.R. §2.56(c); TMEP §§904.07(a), 1301.04(g)(i).
In this case, the specimen shows a café complete with menus to order from and signage with the applied-for mark. However, the signage appears to “float” and has different pixilation than the surrounding image, suggesting the mark has been digitally superimposed over top of the image. Therefore the specimen does not show actual use of the mark in commerce.
Additional information/documentation about specimen required. To permit proper examination of the application record for compliance with use in commerce requirements, applicant must respond to the following requests for information and documentation about the specimen(s). See 37 C.F.R. §2.61(b); TMEP §814. Answer for each specimen/photograph/image previously provided. For any webpage submission, either as a specimen or as supporting evidence, provide a digital copy of the entire webpage from top to bottom, as rendered in an Internet browser, that includes the URL and access or print date. TMEP §710.01(b) (citing In re I-Coat Co., 126 USPQ2d 1730, 1733 (TTAB 2018)).
(1) Identify the particular service(s) listed in the application for which the specimen(s) was submitted to show use of the mark.
(2) Explain whether the specimen was created for submission with this application. If so, specify the date each specimen was created. If the applicant obtained the content of the webpage or image(s) of the mark in connection with the services shown in the specimen(s) from a third-party website, provide the URL of the website and a digital copy of relevant webpage(s) for each image.
(3) Provide information about how applicant advertises the services and representative examples from online or print sources showing how the mark appears in applicant’s advertising of the services. Provide the name of the online or print source and a complete copy of the webpage(s) or print page(s) showing the services advertised for sale. For each source, specify when the services were first advertised for sale and if the services are still advertised for sale in that environment.
(4) For the services identified in response to question (1), specify the date the services were first rendered or provided to or within the United States, the dollar amount of sales with or within the United States, and provide at least three invoices or other supporting documentation that show payments or other consideration made, redacting personal or private information of buyers as necessary.
Response option. Applicant may respond to the specimen refusal by satisfying one of the following for each applicable international class:
(1) Submit the additional information/documentation referenced above establishing that the original specimen was actually used in commerce prior to expiration of the filing deadline for filing a statement of use.
(2) Applicant may respond to the refusal by submitting a different specimen (a “verified substitute specimen”) 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 services identified in the statement of 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 prior to expiration of the filing deadline for filing a statement of use.” The substitute specimen cannot be accepted without this statement. For instructions on how to submit a different specimen using the online Trademark Electronic Application System (TEAS) form, see the Specimen webpage.
Applicant must also fully respond to the requirement for additional information and documentation referenced above for any different specimen provided. 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 information 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).
Applicant may not withdraw the statement of use. See 37 C.F.R. §2.88(f); TMEP §1109.17.
How to respond. Click to file a response to this nonfinal Office action.
/Jason R. Nehmer/
Trademark Examining Attorney
Law Office 121
(571) 270-5303
jason.nehmer@uspto.gov
RESPONSE GUIDANCE