Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

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:  April 24, 2020

 

INTRODUCTION

 

This new, non-final Office action is in response to the applicant’s Response to Office Action filed on April 17, 2020.

 

In the non-final Office action of August 5, 2019, the examining attorney required the applicant to appoint U.S. counsel and maintained and continued the requirements that the applicant submit a substitute specimen, additional specimens, and provide additional information about the goods and specimens.

 

The applicant responded by SATISFYING the U.S. counsel requirement.  Additionally, the applicant provided the above requested information, but the requirements pertaining thereto are MAINTAINED AND CONTINUED for the brief reasons below.  Additionally, the applicant amended the dates of use, thereby creating a NEW ISSUE for the below reason.

 

SUMMARY OF ISSUES

 

The applicant must address:

 

• Dates of Use After Application Filing Date – NEW ISSUE;
• Substitute Specimen Required – MAINTAINED AND CONTINUED;
• Additional Information Required – MAINTAINED AND CONTINUED; and
• Additional Specimens Required – MAINTAINED AND CONTINUED.

 

DATES OF USE AFTER APPLICATION FILING DATE – NEW ISSUE

 

The application sets forth dates of first use anywhere and in commerce of the mark that are after the date the application was signed and filed, and clarification is required regarding the basis for registration.  See 37 C.F.R. §2.61(b); TMEP §903.04.  For an application based on use in commerce under Trademark Act Section 1(a), applicant must have used the mark in commerce at least as early as the application filing date.  37 C.F.R. §2.34(a)(1)(i); TMEP §§806.01(a), 901; see 15 U.S.C. §1051(a)(2), (a)(3)(C).

 

Applicant may clarify the dates of first use by satisfying one of the following:

 

(1)        If the mark was in use in commerce on or before the application filing date, applicant must amend the dates of first use to specify the correct dates, verified with an affidavit or signed declaration under 37 C.F.R. §2.20.  TMEP §903.04; see 37 C.F.R. §§2.71(c), 2.193(e)(1).

 

(2)        If the mark was not in use in commerce on or before the application filing date, applicant may amend the filing basis to intent to use under Section 1(b), if applicant can meet the requirements for the new basis.  TMEP §903.04; see TMEP §806.03(c).  With this option, “registration may not be granted until the applicant files an acceptable allegation of use.”  TMEP §1103.

 

For an overview of the response options referenced above and instructions on how to satisfy these requirements online using the Trademark Electronic Application System (TEAS) form, please go to the Dates of Use webpage.

 

SUBSTITUTE SPECIMEN REQUIRED – MAINTAINED AND CONTINUED

 

The April 17, 2020, substitute specimen is unacceptable for the following reasons:

 

• First-fourth pages: The mark appears nowhere on the specimen.  The mark associated with the goods appears to be “My Play” or some variation of that wording as viewed on the header of the pages.  Additionally, the wording “Regale Six Panel My Play Portable Play Yard” appears in the product description on the second page.
• Fifth page: The applicant appears to have placed adhesive letters temporarily on a hand mirror given their unevenness. 
• Sixth page:  It is unclear what this specimen depicts, though it may be a cellphone inside a case.  Additionally, the applicant appears to have placed adhesive letters temporarily on the goods given their unevenness. 
• Seventh page: The applicant appears to have placed adhesive letters temporarily on a hand mirror given their unevenness. 

 

ADDITIONAL INFORMATION REQUIRED – MAINTAINED AND CONTINUED

 

The additional information the applicant provided is unacceptable for the following reasons:

 

• First page: This does not show that a CHOP-brand of playpen was sold; the brand appears to be “My Play” or some variation thereof.
• Second page: Only a portion of the page is provided, thereby omitting context.
• Fourth-fifth pages: This does not show that a CHOP-brand of hand mirror was sold.

 

ADDITIONAL SPECIMENS REQUIRED – MAINTAINED AND CONTINUED

 

Until the applicant is able to provide acceptable substitute specimens for each good as well as acceptable responses to the additional information requirement, this requirement is MAINTAINED AND CONTINUED. 

 

ASSISTANCE

 

Please e-mail the below examining attorney with questions about this Office action.

 

How to respond.  Click to file a response to this nonfinal Office action.

 

/Kevin G. Crennan/

Trademark Examining Attorney

Law Office 113

(571) 272-7949

kevin.crennan@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 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 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 April 24, 2020 for

U.S. Trademark Application Serial No. 88415392

 

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. 

 

 

/Kevin G. Crennan/

Trademark Examining Attorney

Law Office 113

(571) 272-7949

kevin.crennan@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 April 24, 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.”