To: | Wei Yong (aotumanmark@hotmail.com) |
Subject: | U.S. Trademark Application Serial No. 88418179 - LEETEL - N/A |
Sent: | July 25, 2019 03:16:37 PM |
Sent As: | ecom117@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88418179
Mark: LEETEL
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Correspondence Address: |
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Applicant: Wei Yong
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Reference/Docket No. N/A
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 25, 2019
Database Search. The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
SUMMARY OF ISSUES:
· SPECIMEN REFUSED AS MOCKUP: SUBSTITUTE SPECIMEN REQUIRED
IDENTIFICATIONS REQUIRE AMENDMENT
Some of the wording used to describe portions of applicant’s goods and/or services in the identification is indefinite and too broad and could include goods and/or services in other international classes. This wording must be clarified for the reasons listed below. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must amend this wording to specify the common commercial or generic name of the goods and/or services. See TMEP §1402.01. If the goods and/or services have no common commercial or generic name, applicant must describe or explain their nature using clear and succinct language. See id.
Applicant may substitute and/or select from the following wording, if accurate:
ID Manual. 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.
Partial Abandonment Advisory. If applicant does not respond to this Office action within the six-month period for response, the above-referenced goods in International Class 28 will be deleted from the application. The application will then proceed with the following goods and/or services in International Class(es) 28 only:
See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).
REMOVED FROM TEAS PLUS STATUS: ID REQUIREMENT NOT MET
The additional fee is required even if applicant later corrects these application requirements.
Applicant should also note the following requirement.
SPECIMEN REFUSED AS MOCKUP: SUBSTITUTE SPECIMEN REQUIRED
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 addition, a photo of the mark on a label, tag, or piece of paper that appears on applicant’s or a third party’s goods or packaging is generally not acceptable to show applicant’s use of the applied-for mark in commerce. See 15 U.S.C. §1127; TMEP §§904.03(a), 904.07(a). Applicant must show the mark on applicant’s own goods or packaging as it is seen by the purchasing public, with goods that have actually been sold or transported in commerce. See TMEP §904.07(a).
In this case, applicant has digitally or physically imposed the applied-for mark on the toy of a third party, on sale here: http://playpenbaby.com/product/flexible-wooden-worm-toy/ .
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 and/or services 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, or displays of the goods, and (3) the goods are actually sold or transported in commerce. See 15 U.S.C. §1127.
In addition to the examples of specimens in (2) in the above paragraph, examples of specimens for goods also include instruction manuals, containers, and webpages that include a picture or textual description of the goods associated with the mark and the means to order the goods. See TMEP §§904.03 et seq.
Applicant may respond to this refusal by satisfying one of the following for each applicable international class:
(1) Submit 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 and/or services 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.
(2) 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.
For an overview of both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, see the Specimen webpage.
REQUIREMENT FOR ADDITIONAL SPECIMENS
Given the wide range of goods identified in the application, and the nature of the specimens of record, the examining attorney requires additional specimens of use in this case to allow for a complete and accurate examination, and to assess the registrability of the applied-for mark. 37 C.F.R. §§2.56(a), 2.61(b), 2.86(a)(3); TMEP §§814, 904.01(a), 1402.03.
The applicant must provide at least one specimen from each of the following groups of goods:
That is, the applicant is expected to provide at least 3 different specimens showing at least one good from each grouping noted above.
If applicant is unable to provide specimens to support use of one or more categories of goods, the applicant must delete these entries, or amend the filing basis for those goods that were not in use as of the application filing date to an intent to use basis under Section 1(b). This option will later necessitate additional fees and filing requirements such as providing a specimen for these goods at a subsequent date.
Failure to provide the required additional specimens is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.
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
/Joseph Becker/
Trademark Examining Attorney, Law Office 117
United States PTO
(571) 270-5493
Joseph.Becker1@uspto.gov
RESPONSE GUIDANCE