To: | Shenzhen ELETUN Technology Co.,Ltd (syetm@reidwise.com) |
Subject: | U.S. Trademark Application Serial No. 88406214 - CUILU - N/A |
Sent: | May 05, 2020 08:51:25 AM |
Sent As: | ecom115@uspto.gov |
Attachments: | Attachment - 1 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88406214
Mark: CUILU
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Correspondence Address:
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Applicant: Shenzhen ELETUN Technology Co.,Ltd
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Reference/Docket No. N/A
Correspondence Email Address: |
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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) 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: May 05, 2020
This Office action is in response to applicant’s communication filed on April 13, 2020.
In a previous Office action dated March 26, 2020, the trademark examining attorney refused registration of the applied-for mark based on the following: failure to show the applied-for mark in use in commerce with any of the specified goods. In addition, applicant was required to satisfy the following requirement(s): provide additional information and documentation about the specimen.
The trademark examining attorney maintains and now makes FINAL the refusal(s) and requirement(s) in the summary of issues below. See 37 C.F.R. §2.63(b); TMEP §714.04.
SUMMARY OF ISSUES MADE FINAL that applicant must address:
SPECIMEN UNACCEPTABLE
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 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). “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 altered to include the mark or a mockup of how the mark may be displayed on the product or packaging is not a proper specimen for goods because it does not show actual use of the mark in commerce. See 15 U.S.C. §1127; 37 C.F.R. §2.56(c); TMEP §904.04(a).
In this case, the webpage screenshot in the substitute specimen appears to have been created for submission with the application. Applicant’s response and the specimen show that the listing was created on April 4, 2020, shortly before applicant submitted its response and well after applicant filed its statement of use. Further, applicant appears to have copied its listing and images from a third party. See the attached evidence from amazon.com, showing a nearly identical listing for apparent third party goods under the mark MULTAICH that appear to be in actual commerce. Applicant appears to have copied not only its product images but considerable language from the older apparent third party listing, added April 17, 2019. Likewise, in the image of the goods, the mark appears to float over the surface of the goods and does not properly follow the contours of the goods in a manner consistent with text that has been digitally applied to an image. Indeed, the attached evidence shows an image of applicant’s purported goods that is otherwise identical apart from applicant’s digital addition of the applied-for mark. Moreover, applicant has freely admitted in its response that its goods have not been sold, and thus are not in commerce. Accordingly, the specimen appears to consist of digitally-altered or otherwise mock-up images, thus, applicant has failed to show use of the mark in commerce
Thus, the refusal to register the applied-for mark in International Class 14 is now made FINAL because applicant failed to provide evidence of use of the mark 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), 2.63(b); TMEP §§904, 904.07, 1301.04(g)(i).
Response options. 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 below 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 goods 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.
INFORMATION ABOUT SPECIMEN REQUIRED
Applicant has not fully responded to the requirement for information about the original specimen. Thus, the requirement for information/documentation about the original specimen and any substitute specimen is continued and made FINAL. 37 C.F.R. §2.61(b).
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 provided. For any website source, 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)).
Applicant has not responded to number (6) below. The remainder of the requests are restated for context.
(1) Identify the particular good(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 applicant used the image(s) of the goods 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 and examples of how applicant’s goods appear in the actual sales environment.
(a) If sold in stores, provide a representative sample of the name(s) of the stores and of photographs showing the goods for sale in the named stores, such as photographs of the sales displays or goods on shelves with the mark.
(b) If sold online, provide a representative sample of the name(s) of the online retailers, the website URL(s) for each named retailer, and a digital copy of the webpages showing the goods for sale on the named website.
(c) If sold in another type of sales environment (e.g., catalogs, trade shows), identify the environment and provide photographs and/or documentation showing the goods for sale in that environment.
(4) If the information in question (3) about how the goods appear in the actual sales environment is not available to applicant, please describe how applicant’s goods are sold or transported and provide photographs and other documentation showing how applicant’s mark appears on the goods and/or its packaging when the goods are sold or transported to or within the United States.
(5) For each category of sales environment specified in response to questions (3) and (4), specify when the goods bearing the mark were first available for purchase within the United States, the date of the first sale of the goods to or within the United States, and whether the goods are still for sale to or within the United States in that environment.
(6) For the goods identified in response to question (1), specify 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.
How to respond. Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).
/Jim Hill/
James Hill
Examining Attorney
Law Office 115, USPTO
(571) 270-5682
james.hill@uspto.gov
RESPONSE GUIDANCE