| To: | ShenZhen Everbest Machinery Industry Co. ETC. (Trademark@lockelord.com) |
| Subject: | U.S. Trademark Application Serial No. 88411667 - CEM - 1008276.4002 |
| Sent: | July 31, 2019 05:23:11 PM |
| Sent As: | ecom106@uspto.gov |
| Attachments: | Attachment - 1 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 88411667
Mark: CEM
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Correspondence Address:
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Applicant: ShenZhen Everbest Machinery Industry Co. ETC.
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Reference/Docket No. 1008276.4002
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). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: July 31, 2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SUMMARY OF ISSUES:
SPECIMEN REFUSAL – PARTIAL TO INTERNATIONAL CLASS 10
Registration is refused because the specimen in International Class 10 appears to consist of a digitally altered image or a mock-up of the mark on the goods or their packaging and does not show the applied-for mark in actual use 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); TMEP §§904, 904.07(a).
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 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). “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 otherwise altered to include the mark does not show actual use of the mark in commerce. See 15 U.S.C. §1127; TMEP §§904.04(a), 904.07(a); cf. In re Chica, Inc., 84 USPQ2d 1845, 1848 (TTAB 2007) (holding that “a mere drawing of the goods with an illustration of how the mark may be displayed” was not an acceptable specimen because it did not show actual use in commerce); In re The Signal Cos., 228 USPQ 956, 957-58 n.4 (TTAB 1986) (noting that a printer’s proof of an advertisement would not be an acceptable specimen because it does not show actual use in commerce).
In this case, the specimen appears to be created for the submission as specimen. Specifically, the power button on the good is misplaced and the placement of the mark on the goods seems slanted and uneven on the goods. Therefore, the submitted specimen cannot be accepted.
Additional information/documentation 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 website source submitted 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 good(s) listed in the application for which the specimen(s) was submitted to show use of the mark.
(2) Was the specimen created for submission with this application? If so, specify the date each specimen was created. If applicant obtained 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.
Response options. Applicant may respond to the refusal of registration due to the specimen’s failure to show actual use in commerce by amending the filing basis to allege intent to use the mark in commerce, for which no specimen is required now. See 37 C.F.R. §2.34. This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.
Alternatively, applicant may also respond to the refusal by submitting 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 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.
For an overview of these response options and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, see the Specimen webpage.
If applicant submits a verified substitute specimen, applicant must also fully respond to all the requirements for information and documentation. 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 evidence 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). However, amending the application filing basis to intent-to-use under Section 1(b) will resolve the requirements for information and documentation.
If applicant responds to the refusals, applicant must also respond to the requirement set forth below.
IDENTIFICATION OF GOODS REQUIREMENT
The wordings “thermometers other than for medical use, namely, infrared thermometers, infrared video thermometers, infrared thermometers with multipoint laser targeting, infrared thermometers with circular laser targeting, infrared thermometers with dual laser targeting, infrared pixel imager thermometers, infrared temperature finders, infrared thermometer probe, infrared temperature sensor probe, panel infrared thermometers, infrared thermometers with probe”, “food safety, infrared thermometers”, “dry-well temperature calibrators”, “digital multimeters along with infrared thermal imagers, sold as a unit”, “resistance decade boxes”, “LCR (inductance, capacitance and resistance) meters for measuring the inductance, capacitance, and resistance of an electronic component”, “insulation resistance testers”, “insulation resistance testers along with high resolution micro-ohm meters, sold as a unit”, “earth ground resistance testers”, “low resistance testers”, “high voltage insulation testers; appliance testers”, “magnet space testers”, “laser distance meters”, “laser range telescopic, ultrasonic distance meters”, “electronic zoom wall scanner/cable/metal/wood detectors”, “three-in-one electronic stud/metal/AC voltage finders”, “superheat and subcooling analyzers for use with a display”, “alcohol testers”, “wireless probes and meters for measuring environmental conditions such as temperature, humidity”, “moisture meters for use in household and industrial field services”, “digital moisture data loggers”, “moisture meters for industrial field service with laser level and AC voltage finders”, “multifunction environment meters for measuring light, sound level, humidity, temperature, air velocity and air flow in industrial working environments”,“ hand-held gas detectors with infrared thermal imagers”, “electronic home energy monitors”, “air pollutant particle counters”, “carbon monoxide digital data loggers”, “four-in-one multifunction meters”, “ozone gas detectors”, “lineman's handset telephone, namely, a butt set phone outlet checking apparatus”, and “multi-timers” of goods is indefinite and must be clarified because the nature of the goods is not specified. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
If modifying one of the duplicate entries, applicant may amend it to clarify or limit the goods, but not to broaden or expand the goods beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Also, generally, any deleted goods may not later be reinserted. TMEP §1402.07(e).
Applicant may substitute the following wording, if accurate (suggestions in bold):
International Class 9: Thermometers other than for medical use, namely, infrared thermometers, infrared video thermometers, infrared thermometers with multipoint laser targeting,
infrared thermometers with circular laser targeting, infrared thermometers with dual laser targeting, infrared pixel imager thermometers, infrared temperature finders, infrared thermometer probe,
infrared thermometer temperature sensor probe, panel infrared thermometers, infrared thermometers with probe; thermal imaging systems not for medical use; thermal imaging
cameras; multipurpose non-medical thermometers; temperature indicators; electrical thermal leak detectors for use in detection of energy leaks along walls, molding, ductwork, equipment in homes,
offices, manufactures and buildings; Dew point temperature indicators; food safety monitoring devices, namely, infrared thermometers; folding non-medical thermometers; BBQ
thermometers for cooking; deep-frying oil testing thermometers; beer flow meters for use in connection with beer dispensing systems; red wine IR thermometers; non-medical three-in-one IR thermometers
with thermistor probe and clamp; non-medical two-in-one IR thermometers with thermistor probe; IR calibrators for use in calibration of any infrared thermometer or thermal imager within its
temperature range; dry-well temperature calibrators for use in calibration of any infrared thermometer or thermal imager within its temperature range;
non-medical two-in-one infrared thermometers along with pressure temperature charts, sold as a unit; non-medical two-in-one infrared thermometers along with flash memories, sold as a unit;
non-medical two-in-one infrared thermometers along with non-contact AC voltage meters, sold as a unit; multifunction non-medical infrared thermometers; thermometers not for medical use; pen-type
non-medical thermometers; non-medical thermometers with probes; high definition personal video borescope; digital multimeters; industrial digital multimeters; heavy duty digital multimeters; heavy
duty true RMS (root mean square) digital multimeters; autoselecting digital multimeters; autoranging digital multimeters; multifunction digital multimeters; multifunction digital detectors for use in
detecting light, radiation, heat sources, leaks in pipes; multifunction digital testers for use in testing insulation resistance, continuity, loop impedance and earth resistance; multifunction
digital monitors for use in monitoring flowmeters; digital multimeters along with non-medical infrared thermal imagers, sold as a unit; digital multimeters along with TFT
(thin-film transistor) color LCD displays, sold as a unit; digital multimeters with oscilloscope functions; digital multimeters along with voltage and current calibrator, sold as a unit; digital
multimeters with automatic selection function; pen-type digital multimeters; pocket digital multimeters; pocket digital multimeters along with NCV (non-contact voltage) testers, sold as a unit;
three-in-one multimeters and testers for use in testing voltage, current, resistance; electric resistance decade boxes; electronic components testers for
testing voltage, current, resistance, capacitance, frequency, temperature, and duty cycle; intelligent electronic semiconductor analyzers; LCR (inductance, capacitance and resistance)
electric meters for measuring the inductance, capacitance, and resistance of an electronic component; five-in-one digital multimeters for conducting environment measurements;
six-in-one digital multimeters for conducting environment measurements; true RMS (root mean square) multimeters and oscilloscope featuring cellphone and operating software
platforms; measuring apparatus, namely, clamp meters for measuring electricity, true RMS (root mean square) clamp meters for measuring electricity, clamp meters with TFT (thin-film transistor) color
LCD displays for measuring electricity, autoranging clamp meters with dual type K inputs for measuring electricity, autoranging clamp meters with flexible clamps for measuring electricity, watt clamp
meters for measuring electricity, open-jaw clamp meters for measuring electricity; AC leakage current testers for use in appliance field service, in the lab, or in production; measuring apparatus,
namely, flexible clamp meters for measuring electricity, power quality clamp meters for measuring electricity, earth ground clamp meters for measuring electricity, milliamp process clamp meters for
measuring electricity; flexible clamp incorporating an electronic data loggers; flex clamp adapter for use with electronic data loggers; clamp-on adaptors for use with multimeters; signal line
splitters for electronic apparatus; three-phase power quality electronic analyzers along with infrared thermal imagers, sold as a unit; handheld digital oscilloscope; electronic multifunction
installation testing unit for use in verifying the safety of electrical installations in domestic, commercial and industrial applications; insulation resistance testers featuring digital
multimeters function; insulation resistance testers, namely, insulation resistance meters; insulation resistance testers, namely, insulation resistance
meters along with high resolution micro-ohm meters, sold as a unit; earth ground resistance testers for testing (specify e.g. electric current in the
earth); RCD (residual current device) testers for testing electric current in the earth; low resistance testers, namely, ohmmeters; high voltage insulation testers;
appliance testers for testing electric current; {indicate type of testers, e.g., circuit} five-in-one multifunction
installation testers; loop/PSC (prospective short circuit) testers; electrical phase rotation indicators for use in measuring phase rotation in all areas where three-phase supplies are used to feed
motors and electrical systems; electrical phase and motor rotation indicators for use in providing rapid indication of three-phase rotation using test leads supplied or determining motor rotation on
synchronous and asynchronous three-phase motors; electrical socket polarity testers; electrical socket polarity and earth ground leakage testers; electricity receptacle testers; GFCI (ground-fault
circuit interrupter) testers; electrical circuit receptacle testers; electrical outlet testers; electrical earth ground and continuity testers; electrical circuit analyzers; lamp electrical current
testers; electrical data loggers; three-phase electrical power quality analyzers; electrical appliance testers for testing electric current; cable locators; non-contact voltage detectors; electrical magnet space testers; electrical current testers; borescopes; borescopes with articulating probes; video borescopes; camera testers; electronic stud finders, wall scanner,
metal, and ac voltage detectors, sold as a unit; measuring apparatus, namely, laser distance meters; laser distance meters along with stud finders, wall scanner, metal and ac voltage detectors, sold as a unit; measuring apparatus, namely, laser range telescopic,
ultrasonic distance meters; electronic zoom wall scanner, cable, metal, wood detectors, namely, {indicate the good being sold, e.g., metal detectors}; electronic stud finders, namely, three-in-one electronic stud/metal/AC voltage finders for detecting studs, metal, and AC voltage wires; concrete scanner; wireless
telecommunications transmitter; electronic vibration meters; sound level meters; sound level calibrator; electronic circuit breaker finders; circuit breaker finder adapter kits comprised primarily of
electronic indicator for locating circuit breakers in walls; electrical amplifier probe; continuity testers; digital multimeters with different test functions; two-in-one LAN testers and digital
multimeters; cable identifiers along with digital multimeters, sold as a unit; two-in-one satellite location finders and digital multimeters; solar power meters with DMM (digital multimeter) for
measuring solar power; solar power recorders; electronic coating thickness testers for testing the thickness of paint or walls; cable length testers; colorimeters; digital color intensity testers for
photography use; VDV (voice, data and video) wire testers; GPS land meters; CCTV monitors testers and cable testers and digital multimeters; non-medical thermocouple thermometers;
non-medical multifunction thermocouple thermometers; non-medical RTD (resistance temperature detector) thermometers; non-medical thermistor thermometers; psychrometers; measuring apparatus, namely,
dew point indicator, wet bulb indicator, and psychrometer, sold as a unit; psychrometers with IR thermometers; hygrometers; anemometers; thermo-anemometers; thermo-anemometers
with IR temperature indicators; hot wire anemometers; hot wire anemometers with electronic data loggers; non-medical temperature, humidity and dewpoint meters; manometers; pressure and flow meters;
superheat and subcooling analyzers for use with a display for {specify function or purpose of the analyzer}; alcohol testers for measuring alcohol levels;
electronic data loggers namely, laboratory temperature and humidity data loggers, laboratory sound level data loggers, laboratory CO data loggers, sound level data loggers, CO data loggers,
temperature and humidity data loggers, DC voltage and current data loggers, temperature and humidity and pressure data loggers,
temperature and humidity and air pressure data loggers, anemometers data loggers, solar USB data loggers, vibration data loggers, and vibration, temperature, humidity data
loggers; wireless probes and electric meters for measuring environmental conditions such as temperature, humidity; dew point vibration meters; tachometers; AC electrical adapter for use with tachometers; moisture meters for use in household and industrial field services, namely, {indicate the purpose of the goods or identify
the goods by common commercial name}; electrical moisture meters along with psychrometers and non-medical IR thermometers, sold as a unit; electrical
digital moisture data loggers; electrical moisture meters for industrial field service with laser level and AC voltage finders; differential and absolute
pressure manometers; pressure manometers; gas leak detectors; combustible gas leak detectors; refrigerant leak detectors; refrigerant and /SF6 (sulfur hexafluoride) leak detectors; HCHO
(formaldehyde) and TVOC (total volatile organic compounds) meters for use in industrial working environments; microwave leakage detectors; magnetic field meters; HCHO (formaldehyde) meters for
detecting formaldehyde concentrations in industrial working environments; multifunction environment electric meters for measuring light, sound level, humidity, temperature, air
velocity and air flow in industrial working environments; temperature imaging apparatus for non-medical use; hand-held gas detectors with infrared thermal imagers for detecting the
presence of gas; electronic home energy monitors in the nature of energy meters for tracking and monitoring energy use; electric light meters; electric LED light meters;
electric UV light meters; solar power meters for measuring power of sunlight; air quality measurement apparatus, namely, air pollutant particle counters; 2.5 diameter
particulate matter air quality detectors; air pollutant particle mass concentration detectors; radiation scanner; two-in-one HCHO (formaldehyde) and TVOC (total volatile organic compounds) meters for
use in industrial working environments; carbon monoxide meters/monitors; carbon dioxide meters and monitors; carbon monoxide digital electronic data
loggers; air quality CO2 monitors; four-in-one multifunction gas meters; ozone gas detectors for detecting the presence of gas; waterproof ph and conductivity meters; non-medical temperature and humidity meters; meters for measuring environmental conditions such as light, sound level, humidity, temperature, air velocity and
air flow; wireless meters for measuring environmental conditions such as light, sound level, humidity, temperature, air velocity and air flow; digital automotive multimeters; digital automotive
oscilloscope multimeters; automotive testers for use in testing engine functionality and emissions levels; meters for use in the oil industry for use in measuring oilfield pollutant levels; measuring
apparatus, namely, clamp meters for use in the oil industry for use in measuring oilfield pollutant levels; electrical relay testers; electrical current short testers; electrical current testers;
automotive electrical current testers; circuit voltage testers; tire pressure gauge; AC voltage adaptor for use with automotive fuses; voltage testers and detectors; automotive
and household battery testers; automotive and household battery analyzers; refractometers; electronic tone and probe kits comprised primarily of tone generator and amplifier probe for use in
household and industrial field services for testing continuity and locating signal of installed wires and cables; electronic mapping device for mapping coaxial cables behind walls; lineman's handset
telephone, namely, a butt set phone outlet checking apparatus for checking {indicate what the goods are used for, e.g., modular telephone outlets}; multi-timers, namely, electronic timers; electrical wires in the nature of test leads; non-medical temperature probes; pouches and cases specially adapted for all of the foregoing
International Class 10: Thermometers for medical use, namely, body infrared thermometers, forehead infrared thermometers, and ear thermometers; electronic blood pressure monitors; electron clinical medical thermometers
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
RESPONSE GUIDELINES
For this application to proceed, applicant must explicitly address each refusal and/or requirement 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.
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.
How to respond. Click to file a response to this nonfinal Office action
/Marcya N. Betts/
Marcya N. Betts
Examining Attorney
Law Office 106
(571) 272-4913
Marcya.Betts@uspto.gov
RESPONSE GUIDANCE
