To: | American Bar Association (trademarkdocket@venable.com) |
Subject: | U.S. Trademark Application Serial No. 88410044 - UNDER CONSTRUCTION - 502145 |
Sent: | October 10, 2019 08:35:02 AM |
Sent As: | ecom127@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88410044
Mark: UNDER CONSTRUCTION
|
|
Correspondence Address:
|
|
Applicant: American Bar Association
|
|
Reference/Docket No. 502145
Correspondence Email Address: |
|
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: October 10, 2019
This Office action supersedes the previous Office action issued on July 17, 2019, in connection with this application. The assigned trademark examining attorney issued an incorrect specimen refusal for the goods in class 009 and an incorrect basis for the specimen refusal in class 016. See TMEP §§706, 711.02. Specifically, the matching issue concerns having a space between the words and not having the words on different lines of text. The trademark examining attorney apologizes for any inconvenience caused by the delay in raising this issue.
Applicant must address the issue raised in this Office action. The specimen refusal concerning class 009 is withdrawn. See TMEP §713.02.
SPECIMEN REFUSAL
THIS REFUSAL APPLIES TO CLASS 016 ONLY
Registration is refused because the specimen does not show the mark in the drawing in use in commerce in International Class 016, which is required in the application. 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), 1301.04(g)(i). The mark appearing on the specimen and in the drawing must match; that is, the mark in the drawing “must be a substantially exact representation of the mark” on the specimen. See 37 C.F.R. §2.51(a)-(b); TMEP §807.12(a).
In this case, the specimen for class 016 displays the mark as UNDERCONSTRUCTION. However, the drawing displays the mark as UNDER CONSTRUCTION. The mark on the specimen does not match the mark in the drawing because it does not contain the space between the words. Simply having the words in different colors is not sufficient to show a space between the words. Applicant has thus failed to provide the required evidence of use of the mark in commerce. See TMEP §807.12(e); TMEP §807.12(a).
Applicant may respond to this refusal by satisfying one of the following:
(1) Submit a new drawing of the mark that shows the mark on the specimen. See 37 C.F.R. §2.72(a)-(b). Applicant may amend the mark in the drawing to match the mark on the specimen but may not make any other changes or amendments that would materially alter the drawing of the mark. See 37 C.F.R. §2.72(a)-(b); TMEP §807.14.
(2) Submit a different specimen (a verified “substitute” specimen) for each applicable international class that (a) shows the mark in the drawing in actual use in commerce for the goods in the application or amendment to allege use, and (b) 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.
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).
For more information about drawings and instructions on how to satisfy these response options online using the Trademark Electronic Application System (TEAS) form, see the Drawing webpage.
RESPONDING TO THIS OFFICE ACTION
Response guidelines. Response guidelines. For this application to proceed, applicant must explicitly address each refusal 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.
If applicant does not timely respond to this Office action, the following class will be deleted from the application: 016. See 37 C.F.R. §2.65(a); TMEP §718.02(a).
In such case, the application will then proceed with the following class only: 009. See TMEP §718.02(a).
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. 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
/Carolyn R. Detmer/
Carolyn R. Detmer
Examining Attorney
Law Office 127
571-272-2722
carolyn.detmer1@uspto.gov
RESPONSE GUIDANCE