United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

NON-FINAL 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 17, 2020

 

SECOND EXAMINATION REVIEW

In consideration of Applicant’s Statement of Use, dated and filed February 26, 2020, the specimens and specimen descriptions contained therein, and the record hereof, the undersigned examining attorney has reexamined the above-referenced application, in accordance with section 2.61 of the Trademark Rules of Practice, 37 C.F.R. § 2.61 (2019), and has determined that the application cannot be advanced at this time for the reasons detailed in this communication.

SUBSTANTIVE REFUSAL

SPECIMEN REFUSAL AS TO CLASSES 6 & 22

Applicant has applied to register the mark “ORG WELL ORGANIZED” for use as a source indicator of various goods in International Classes 6, 20, 21, and 22.

Applicant has submitted acceptable specimens for International Classes 20 and 21.

Specimen does not show use in specific classes.  Registration is refused as to International Classes 6 and 22, pursuant to Sections 1 and 45 of the Trademark Act, 15 U.S.C. §§ 1051, 1127 (2012), because the specimens submissions do not show the proposed mark as actually used in commerce in connection with any of the goods in these classes, as printed in the Notice of Allowance issued December 17, 2019.  37 C.F.R. §§ 2.34(a)(1)(iv), 2.56(a); TMEP §§ 904, 904.07(a).  Under Sections 1(d) and 45 of the Trademark Act and Rule 2.56, an acceptable specimen showing actual use in connection with “those goods or services identified in the notice of allowance” is required in order for the mark to be registered by this Office.  37 C.F.R. § 2.88(i)(1); see 15 U.S.C. §§ 1051(d), 1152, 1127; 37 C.F.R. §§ 2.56, 2.88(b)(2); TMEP §§ 904, 904.07(a), 1109.09(b), 1301.04.

Specifically, for a mark to register, Section 45 requires demonstrated use “on the goods or their containers or the displays associated therewith or on tags or labels affixed thereto.”  15 U.S.C. § 1127; see 15 U.S.C. § 1051; 37 C.F.R. § 2.56; TMEP § 904.03. 

To demonstrate trademark use for Class 6, the application contains one JPEG image that Applicant describes as “PRODUCT PACKAGING.”  The identified goods are listed as “BASKETS OF COMMON METALS; METAL HOOKS.”  The specimen product packaging shows a wall-mounted shower caddy featuring a long basket made of stainless steel.  Applicant advertises the goods as “Stainless Steel Long Shower Caddy.”  See attached evidence.  While the goods feature a metal basket, they are not baskets of common metal but Class 21 shower caddies.  Applicant has not shown use of the mark for Class 6.

To demonstrate trademark use for Class 22, the application contains one JPEG image that Applicant describes as “PRODUCT PACKAGING.”  The identified goods are listed as “GARMENT BAGS FOR STORAGE.”  The specimen product packaging shows a bag featuring a set of fabric storage chests.  These goods, non-metal chests, are properly in International Class 20. Applicant has not shown use of the mark for Class 22.

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). 

Any webpage printout or screenshot submitted as a specimen, whether for goods or services, must include the webpage’s URL and the date it was accessed or printed.  37 C.F.R. § 2.56(c).

Response option.  Applicant may respond to this refusal by submitting, for each applicable international class, 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 goods and/or 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 an overview of this response option and instructions on how to submit a different specimen using the online Trademark Electronic Application System (TEAS) form, see the Specimen webpage.  

REFUSAL LIMITED TO ONLY CLASSES 6 & 22

Applicant may respond to the stated refusal by submitting evidence and arguments against the refusal.  In addition, Applicant may respond by doing one of the following:

 

(1)       Deleting the classes to which the refusal pertains;

 

(2)       Filing a Request to Divide Application form (form #3) to divide out the goods that have not been refused registration, so that the mark may proceed toward registration in the classes to which the refusal does not pertain.  See 37 C.F.R. § 2.87.  See generally TMEP §§ 1110 et seq. (regarding the requirements for filing a request to divide). If Applicant files a request to divide, then to avoid abandonment, Applicant must also file a timely response to all outstanding issues in this Office action, including the refusal.  37 C.F.R. § 2.87(e).  There is a fee for each new application created.  See 37 C.F.R. §§ 2.6(a)(19)(ii), 2.87(b); TMEP § 1110.04.  if dividing out some, but not all, of the goods or services within a class, an additional application filing fee will be required for each new separate application created by the division.  37 C.F.R. §§ 2.6(a)(1)(i)-(iii), 2.87(b); TMEP § 1110.02. 

 

PARTIAL ABANDONMENT ADVISORY

If Applicant does not respond to this Office action within the six-month period for response, International Classes 6 and 22 will be deleted from the application.  The application will then proceed with International Classes 20 and 21 only.  See 37 C.F.R. § 2.65(a)-(a)(1); TMEP § 718.02(a).

Applicant may not withdraw the statement of use.  37 C.F.R. § 2.88(g); TMEP § 1109.17.

Applicant must respond timely and completely to the issues raised in this Office Action.  15 U.S.C. § 1062(b); 37 C.F.R. §§ 2.62, 2.65(a); TMEP §§ 711, 718.03.  Please contact the undersigned attorney with any questions. 

How to respond:  Click to file a response to this non-final Office action.

Sincerely,

/Judy Helfman/

Judith M. Helfman

Attorney, Law Office 111

571/272-5892

judy.helfman@uspto.gov

 

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If an applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If an applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on March 17, 2020 for

U.S. Trademark Application Serial No. 88403893

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Judy Helfman/

Judith M. Helfman

Attorney, Law Office 111

571/272-5892

judy.helfman@uspto.gov

 

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from March 17, 2020, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·         Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·         Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·         Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”