To: | Marc Jacobs Trademarks, L.L.C. (jessica.kraver@kattenlaw.com) |
Subject: | U.S. Trademark Application Serial No. 88416806 - THE - 384831-TBD |
Sent: | August 28, 2019 09:22:31 AM |
Sent As: | ecom101@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88416806
Mark: THE
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Correspondence Address:
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Applicant: Marc Jacobs Trademarks, L.L.C.
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Reference/Docket No. 384831-TBD
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: August 28, 2019
Upon further review the examining attorney has determined the following. The examining attorney apologizes for any inconvenience.
MARK ON THE DRAWING AND SPECIMEN DIFFER
Registration is refused because the specimen does not show the mark in the drawing in use in commerce in International Class(es) 18 and 25, which is required in the application or amendment to allege use. 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 displays the mark as THE BACKPACK MARC JACOBS or THE VELVETEEN JEAN JACKET MARC JACOBS. However, the drawing displays the mark as THE. The mark on the specimen and in the drawing do not match because the mark on the drawing is only a portion of the mark appearing on the specimen.
A portion of a mark may be registered only “if that portion presents a separate and distinct commercial impression.” In re Lorillard Licensing Co., 99 USPQ2d 1312, 1316 (TTAB 2011) (citing In re 1175854 Ontario Ltd., 81 USPQ2d 1446, 1448 (TTAB 2006)). In this case, the drawing shows only a nonseparable part of the mark appearing on the specimen. See In re Chem. Dynamics Inc., 839 F.2d 1569, 1571, 5 USPQ2d 1828, 1829-30 (Fed. Cir. 1988); In re Guitar Straps Online LLC, 103 USPQ2d 1745, 1751 (TTAB 2012); TMEP §807.12(a), (d). Specifically, the proposed mark is an article that is a part of the wording on the specimen, to wit: “the velveteen jean jacket,” and “the backpack.” Applicant has thus failed to provide the required evidence of use of the mark in commerce. See TMEP §807.12(a). Therefore, registration is refused.
Applicant should note the following additional ground for refusal.
FAILURE TO FUNCTION
The applied-for mark, as shown on the specimen, does not function as a trademark because it appears differently on the specimen and is thus not in use in the form shown in the application. Therefore, registration is refused.
OPTIONS TO RESPOND TO REFUSALS
Applicant may respond to this refusal by satisfying one of the following:
(1) 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 and/or services 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).
(2) Submit a request to amend the filing basis to intent to use under Section 1(b), for which no specimen is required. This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.
The USPTO will not accept an amended drawing submitted in response to this refusal because the changes would materially alter the drawing of the mark in the original application or as previously acceptably amended. See 37 C.F.R. §2.72(a)-(b); TMEP §§807.14 et seq. Specifically, adding the words found in the specimen to the drawing would materially alter the drawing because the commercial impression would be changed.
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.
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
/Aisha C. Johnson/
Examining Attorney
Law Office 101
United States Patent and Trademark Office
(571) 272-9295
aisha.johnson@uspto.gov
RESPONSE GUIDANCE