| To: | Ana Liu Chiang (diana@archwaytrade.com) |
| Subject: | U.S. Trademark Application Serial No. 88418328 - ARCHWAY - N/A |
| Sent: | August 17, 2019 12:50:01 PM |
| Sent As: | ecom126@uspto.gov |
| Attachments: |
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. 88418328
Mark: ARCHWAY
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Correspondence Address:
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Applicant: Ana Liu Chiang
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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) and/or Electronic System for Trademark Trials and Appeals (ESTTA). A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action.
Issue date: August 17, 2019
This Office action is in response to applicant’s communication filed on July 23, 2019.
In a previous Office action dated July 23, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following: failure to show the applied-for mark in use in commerce with any of the specified goods. In addition, applicant was required to satisfy the following requirements: amend the mark description & color claim; clarify the applicant’s legal entity/owner information; and amend the identification of goods or services.
Based on applicant’s response, the trademark examining attorney notes that the following requirement has been satisfied: clarify the applicant’s legal entity/owner information. See TMEP §§713.02, 714.04.
Further, the trademark examining attorney maintains and now makes FINAL the refusal and requirements in the summary of issues below. See 37 C.F.R. §2.63(b); TMEP §714.04.
SUMMARY OF ISSUES MADE FINAL that applicant must address:
AMEND MARK DESCRIPTION & COLOR CLAIM – FINAL REQUIREMENT
In the July 23, 2019 Office action, the examining attorney required that the applicant amend the color claim and mark description to identify all the colors in the drawing of the mark. The examining attorney specifically noted that the color “white” was omitted from the color claim, and the colors “white and purple” were omitted from the mark description.
In its response, the applicant merely amended the mark description, completely ignoring the outstanding issue of “white” appearing in the drawing.
To clarify how black, white and/or gray are being used in the mark, applicant may satisfy one of the following:
(1) If black and white ARE a feature of the mark, applicant must amend the color claim to include them and amend the description to identify where black, white and/or gray appear in the literal and/or design elements of the mark. The following color claim and description are suggested, if accurate:
Color claim: “The colors blue, red, purple, white and black are claimed as a feature of the mark.”
Description: “The mark consists of the word "ARCHWAY" in stylized blue font and outlined in white with the letter "A" containing a brush line that changes from blue to purple to red; behind the letters "AY" is a stylized globe that is outlined in white and changes from blue to purple to red; all placed on a black background.”
(2) If black and white ARE NOTE a feature of the mark, applicant must amend the description to state that black and white represent background, outlining, shading and/or transparent areas and are not part of the mark. The following description is suggested, if accurate:
“The mark consists of the word "ARCHWAY" in stylized blue font with the letter "A" containing a brush line that changes from blue to purple to red; behind the letters "AY" is a stylized globe that changes from blue to purple to red. The colors black and white represent background, outlining, shading, and/or transparent area and are not part of the mark.”
TMEP §807.07(d).
SPECIMEN REFUSALS – FINAL REFUSALS
Applicant was previously refused registration in International Class 35 because the mark that appears in the drawing did not match the mark as appearing in the specimen. Response options for overcoming that refusal, if any, were set forth in the prior Office action. Applicant, however, responded to such refusal by submitting substitute specimens that do not show proper use of the applied-for mark in commerce for the two (2) reasons immediately stated below. Thus, the refusal to register the applied-for mark in International Class 35 is now made final because applicant failed to provide evidence of use of the mark 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), 2.63(b); TMEP §§904, 904.07, 1301.04(g)(i).
Because the colors white and black appear in the drawing, and it is currently unclear whether applicant is claiming these colors as part of the applied for mark, the examining attorney is assuming that the applicant is claiming both colors.
Therefore, registration is refused because the specimen does not show the mark in the drawing in use in commerce in International Class 35, 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 drawing displays the mark as having the wording ARCHWAY and the stylized globe outlined in white and placed on a black background. However, the specimen displays the mark as ARCHWAY not outlined in white and not placed on a black background. The mark on the specimen does not match the mark in the drawing because the colors in the drawing do not fully match the colors in the specimen. Applicant has thus failed to provide the required evidence of use of the mark in commerce. See TMEP §807.12(a).
Applicant may respond to this refusal by satisfying one of the following:
(1) Submit a new color drawing of the mark that shows the mark on the specimen and an amendment of the description and color claim that agrees with the new drawing. See 37 C.F.R. §2.72(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. The current color claim and description of record would sufficiently match a new drawing that shows the mark currently on the specimen.
(2) Submit a new black-and-white drawing of the mark and an amendment deleting any color claim and modifying the description to delete any references to color. The following description is suggested, if accurate: “The mark consists of the word "ARCHWAY" in stylized font with the letter "A" containing a brush line; behind the letters "AY" is a stylized globe.” Applicant may amend the mark in the drawing to delete color but may not make any other changes or amendments that would materially alter the mark on the drawing. See 37 C.F.R. §2.72(a)-(b); TMEP §807.14.
(3) 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 in the colors depicted on the drawing and for the goods and/or services in the application or amendment to allege use, and (b) 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). Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and webpages that show the mark used in the actual sale, rendering, or advertising of the services. See TMEP §1301.04(a), (h)(iv)(C).
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.
Even if the applicant corrects the matching issue between the drawing and specimen, the specimen still fails to show use of the mark in commerce in Class 35.
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 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). A service mark is used in commerce “when it is used or displayed in the sale or advertising of services.” See 15 U.S.C. § 1127; 37 C.F.R. §2.56(b)(2).
When determining whether a mark is used in connection with the services in the application, a key consideration is the perception of the user. In re JobDiva, Inc., 843 F.3d at 942, 121 USPQ2d at 1126 (citing Lens.com, Inc. v. 1-800 Contacts, Inc., 686 F.3d 1376, 1381-82, 103 USPQ2d 1672, 1676 (Fed Cir. 2012)). A specimen must show the mark used in a way that would create in the minds of potential consumers a sufficient nexus or direct association between the mark and the services being offered. In re Universal Oil Prods. Co., 476 F.2d at 655, 177 USPQ2d at 457; TMEP §1301.04(f)(ii); see also In re JobDiva, Inc., 843 F.3d at 942, 121 USPQ2d at 1126; In re Adver. & Mktg. Dev., Inc., 821 F.2d at 620, 2 USPQ2d at 2014.
To show a direct association, specimens consisting of advertising or promotional materials must (1) explicitly reference the services and (2) show the mark used to identify the services and their source. In re WAY Media, Inc., 118 USPQ2d at 1698 (quoting In re Osmotica Holdings, Corp., 95 USPQ2d 1666, 1668 (TTAB 2010)); TMEP §1301.04(f)(ii). Although the exact nature of the services does not need to be specified in the specimen, there must be something which creates in the mind of the purchaser an association between the mark and the services. In re Adair, 45 USPQ2d 1211, 1215 (TTAB 1997) (quoting In re Johnson Controls Inc., 33 USPQ2d 1318, 1320 (TTAB 1994)).
In the present case, the specimen does not show a direct association between the mark and services in that applicant has submitted a business card, a photo of the applicant’s mark on a window, and an invoice. In this case, the business card and the photo of the window makes no reference as to what the services that applicant actually provides. Further, the invoice fails to show use of the mark in commerce because, as outlined below in the identification requirement below, consultation services does not reference any of the services that are properly identified in the application. Therefore, the specimens fail to show use of the mark in commerce in Class 35.
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 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 the response options above and instructions on how to satisfy them using the Trademark Electronic Application System (TEAS) response form, see the Specimen webpage.
Instructions to submit a verified substitute specimen
To submit a verified specimen or verified substitute specimen online using the Trademark Electronic Application System (TEAS) response form, (1) answer “Yes” to form wizard question #2; and then, continuing on to the next portion of the form, under the heading “Classification and Listing of Goods/Services/Collective Membership Organization,” do the following for each relevant class for which a specimen is being submitted: (2) check the box next to the following statement: “Check here to modify the current classification number; listing of goods/services/the nature of the collective membership organization; dates of use; and/or filing basis; or to submit a substitute specimen, a foreign registration certificate, or proof of renewal of a foreign registration. If not checked, the changes will be ignored.”; (3) under “Specimen File,” attach a specimen (attachment may not exceed 5 megabytes); (4) describe in the box below where you attached the file what the specimen consists of; and (5) check the box next to the following statement below the specimen description (to ensure that the declaration language is inserted into the form): “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” [for an application based on Section 1(a), Use in Commerce] OR “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use” [for an application based on Section 1(b) Intent-to-Use]. Additionally, when submitting a verified specimen, the TEAS online form requires two signatures: one in the “Declaration Signature” section and one in the “Response Signature” section.
IDENTIFICATION OF SERVICES – FINAL REQUIREMENT
The initial Office action required that the applicant amend its identification because it was indefinite and too broad. Specifically, the initial identification made it unclear whether the applicant was providing retail type services for said goods identified, or if the applicant was offering the goods themselves.
In this case, the application originally identified the goods and/or services as follows: “Household goods residential and commercial furniture lighting and fixture cabinetry.”
However, the proposed amendment identifies the following goods and/or services: “import and export agencies.”
This proposed amendment is beyond the scope of the original identification because the original identification either identifies a retail service that sells the individual products that were listed, or that the applicant produces and sells each individual good listed. Attempting to change the identification to “import and export agencies” completely alters the type of business identified in the initial application.
As a result, the identification in the record will be changed back to the previous identification, and the below issues with the identification remain outstanding.
Additionally, this wording could identify goods in more than one international class. For example, retail store services in Class 35, and providing furniture is in Class 20.
In general, commas should be used in an identification (1) to separate a series of related items identified within a particular category of goods or services, (2) before and after “namely,” and (3) between each item in a list of goods or services following “namely” (e.g., personal care products, namely, body lotion, bar soap, shampoo). Id. Semicolons generally should be used to separate a series of distinct categories of goods or services within an international class (e.g., personal care products, namely, body lotion; deodorizers for pets; glass cleaners). Id.
Applicant may substitute the following wording, if accurate (additions appear in bold underline font):
CLASS 11 – Residential and commercial lighting fixtures
CLASS 20 – Residential and commercial furniture; Furniture in the nature of cabinets
CLASS 21 – Household goods, namely, {specify the type(s) of household goods, e.g., cleaning brushes for household use, containers for food, paper towel dispensers, etc.}
CLASS 35 – Retail store services featuring household goods, furniture, lighting fixtures, and cabinets
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.
MULTIPLE-CLASS APPLICATION REQUIREMENTS
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule). Specifically, the application identifies goods and/or services based on use in commerce that are classified in at least four (4) classes; however, applicant submitted a fee sufficient for only one (1) class. Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.
(3) Submit verified dates of first use of the mark anywhere and in commerce for each international class. See more information about verified dates of use.
(4) Submit a specimen for each international class. The current specimen is not acceptable for any international class. See more information about specimens.
Examples of specimens for goods include tags, labels, instruction manuals, containers, and photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale. 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.
Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and website printouts that show the mark used in the actual sale, rendering, or advertising of the services.
(5) Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.” See more information about verification.
See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
TRADEMARK COUNSEL – ADVISORY
Because of the legal technicalities and strict deadlines of the trademark application process, applicant may wish to hire a private attorney who specializes in trademark matters to assist in the process. The assigned trademark examining attorney can provide only limited assistance explaining the content of an Office action and the application process. USPTO staff cannot provide legal advice or statements about an applicant’s legal rights. TMEP §§705.02, 709.06. See Hiring a U.S.-licensed trademark attorney for more information.
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 final Office action and/or appeal it to the Trademark Trial and Appeal Board (TTAB).
/Kyle Aurand/
Kyle Aurand
Examining Attorney
Law Office 126
(571) 270-3039
kyle.aurand@uspto.gov
RESPONSE GUIDANCE