Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

FINAL 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) 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:  November 20, 2019

 

This final Office action responds to applicant’s communication filed on October 21, 2019.

 

 

Requirement Satisfied

 

The requirement for information concerning the nature of the goods is satisfied by the information in applicant’s October 21, 2019 response.  See TMEP §§713.02, 714.04.

 

 

Summary of Final Issues that Applicant Must Address

 

1.     Trademark Act Sections 1 and 45 Refusal - Specimen is Unacceptable

2.     Requirement for Information about the Specimens

3.     Requirement to Clarify the Identification of Goods

 

 

Trademark Act Sections 1 and 45 Refusal – Specimen is Unacceptable

 

Applicant was previously refused registration because the webpage specimen does not meet the requirements for an electronic display associated with the goods and also appears to consist of a product listing on a third party retailer’s website created specifically for the purpose of satisfying the application requirement for a specimen.  Response options for overcoming the refusal were set forth in the prior Office action.  Applicant responded to the refusal by submitting a substitute specimen that is also unacceptable, for the reasons explained below.  Thus, the refusal to register the applied-for mark 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). 

 

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.  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).

 

The substitute specimen is a webpage similar to the original specimen, except that an “add to cart” button is present.  While this resolves the issue concerning a lack of ordering information, it does not obviate the other concerns raised by the original specimen.  Notably, the $575.00 price for a “rubber patch” is inordinately high, in view of the evidence that patches for back pain sold on the same retailer’s website typically cost $30.00 or less. 

 

Applicant says in the October 21, 2019 response to Office action that “[t]he product is comprised of rubber and frequency imprinted hematite powder.”  Hematite consists of “[a] black or blackish-red to brick-red mineral, essentially Fe2O3, the chief ore of iron,” as shown in an entry from the American Heritage Dictionary at Attachment 1.  As indicated in an article from Geology.com at Attachment 2, hematite is a commonly found iron ore used chiefly as a colorant and as a radiation shield. 

 

Applicant’s patch is made primarily of rubber and a common iron ore.  The Amazon.com webpage for the goods says that the product “[c]ontains no actual ingredients . . . [o]nly the resonant frequencies of over 3000 organic plants, herbs, seeds, and fruits.”  The price of applicant’s goods seems very high given the material composition of the goods.  There are no consumer reviews about the product on the Amazon.com page.  The seller of the goods is listed as a new seller and does not offer any other products for sale.  For these reasons, it appears that applicant created the Amazon.com webpage for the purpose of having a specimen to submit with the application, and thus the webpage does not appear to show actual use of the applied-for mark in commerce. 

 

Response options.  Applicant may respond to the final 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 final 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 use and (b) shows the mark in actual use in commerce for the goods identified in the application.  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. 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 final requirement for information and documentation below.  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.

 

 

Requirement for Information about the Specimen

 

In the previous Office action, applicant was required to provide particular information and documentation regarding the specimens filed with application.  In particular, applicant was required to answer questions and provide documentation as follows:

 

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.

 

In response, applicant provide the following information: “Name of seller: Frequency Imprinting International Website of seller: http://www.amazon.com/s?me=A1Q9NY3XH3O63M&marketplaceID=ATVPDKIKX0DER, 1st date available for purchase is July 04, 2017; 1st date of sale is July 04, 2017; and The goods are still for sale. Total sales to date is $25,000. New description: Transdermal rubber patch used for changing brain wave patterns, improving neural processing and treating pain by reducing the harmful effects of various toxins in the environment. Changes brain wave patterns, improves neural processing and treats pain by reducing the harmful effects of various toxins in the environment. The product is comprised of rubber and frequency imprinted hematite powder. Pain and any consumers with pain. Alleviate pain.”

 

The information provided by applicant fails to satisfy the requirement for information because (a) applicant failed to state whether the specimen was created for submission with this application, (b) applicant failed to provide a URL and date of capture for the substitute specimen, (c) applicant failed to provide information about the actual sales environment for applicant’s goods, and (d) the invoices supplied by applicant do not appear to correspond to the identified goods.  Therefore, the requirement for information is now made FINAL.   37 C.F.R. §§2.61(b), 2.63(b).

 

As discussed above, it appears that applicant created the Amazon.com webpage for the purpose of having a specimen to submit with the application, and the webpage does not appear to show actual use in commerce.  Applicant has not provided information regarding any other retail environments, whether physical locations or online retailers, where the identified goods are sold.

 

Furthermore, applicant has submitted three generic invoices from a third party, Romans Lifesciences.  However, the applicant is Narongsak Boonswang and seller listed on the Amazon.com page provided as a substitute specimen is Frequency Imprinting International, LLC.  Applicant has provided no explanation as to whether Romans Lifesciences is another retailer or how this entity relates to the applicant.  Furthermore, each invoice features a “Custom Amount” charged but no information about the nature of the products/services to which the invoices pertain, the quantities purchased, or the price per product/service.  The charged amounts listed on the invoices do not appear to correlate to the price listed in the specimen for the goods.  If applicant’s back patches are $575.00 each, the total charges listed on the invoices, $2778.00, $1813.00 and $862.00, equate to 4.83 back patches, 3.15 back patches, and 1.49 back patches, respectively.  For these reasons, the invoices do not appear to relate to the goods shown in the specimens and fail to satisfy the requirement that applicant provide at least three invoices demonstrating sales of the identified goods under the applied-for mark.  If applicant has actually sold goods through the Amazon.com platform, then applicant should be able to produce screen captures of the “Order Details” for each transaction from Amazon.com’s platform, with personal or private information of buyers redacted as necessary. 

 

 

Requirement to Clarify the Identification of Goods

 

In the initial Office action, applicant was required to clarify the identification of goods because it included wording that was indefinite, overly broad or otherwise unacceptable.  See TMEP §1402.01.  In response to this requirement, applicant submitted an amended identification of goods.  This amended identification is unacceptable because the goods are misclassified.  Therefore, the requirement to clarify the identification of goods is now made FINAL.  See 37 C.F.R. §§2.32(a)(6), 2.63(b); TMEP §1402.01.

 

In particular, transdermal patches for use in the treatment of a particular disease or condition are classified in International Class 5.  Therefore, applicant must correct the classification of the goods to International Class 5.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b).

 

Scope Advisory

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

Suggested Amendments

 

Applicant should note that any wording in bold or in bold italics below offers guidance and/or shows the changes being proposed for the identification of goods and/or services.  If there is wording in applicant’s version of the identification of goods and/or services that should be removed, it will be shown in bold with a line through it such as this: strikethrough.  Applicant should enter its amendments in standard font.  If applicant wishes to accept the suggested deletions, applicant must manually delete the struck through wording in any USPTO response form.  Copying and pasting the language below will not result in deletion of the struck through wording, which will remain within the identification.

 

Applicant may adopt the following identification of goods, if accurate:

 

International Class 5: Transdermal rubber patch used for changing brain wave patterns, improving neural processing and treating pain by reducing the harmful effects of various toxins in the environment

 

For assistance with identifying and classifying goods in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

 

 

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 to this Final Office Action

 

Applicant must respond within six months of the date of issuance of this final Office action or the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond by providing one or both of the following:

 

(1)       A request for reconsideration that fully resolves all outstanding requirements and refusals; and/or

 

(2)       An appeal to the Trademark Trial and Appeal Board with the required filing fees.

 

TMEP §715.01; see 37 C.F.R. §2.63(b)(1)-(2).

 

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)

 

 

If applicant has any questions about this final Office action, please contact the undersigned examining attorney.

 

/Linda Lavache/

Trademark Examining Attorney

Law Office 106

p. 571.272.7187

linda.lavache@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 November 20, 2019 for

U.S. Trademark Application Serial No. 88429843

 

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. 

 

 

/Linda Lavache/

Trademark Examining Attorney

Law Office 106

p. 571.272.7187

linda.lavache@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 November 20, 2019, 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.”