To: | John Beck (mathew.wilson8899@gmail.com) |
Subject: | U.S. Trademark Application Serial No. 88444185 - ALIEN NATION CORPORATION - N/A |
Sent: | August 11, 2019 07:07:17 PM |
Sent As: | ecom103@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88444185
Mark: ALIEN NATION CORPORATION
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Correspondence Address: |
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Applicant: John Beck
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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: August 11, 2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
Search for Conflicting Marks
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).
In this case, applicant must disclaim the wording “CORPORATION” because it is not inherently distinctive. These unregistrable term(s) merely designate the legal character or family business structure of an entity and do not indicate the source of applicant’s goods and/or services. See 15 U.S.C. §§1051-1053, 1127; In re Piano Factory Grp., Inc., 85 USPQ2d 1522, 1526 (TTAB 2006); In re Patent & Trademark Servs., Inc., 49 USPQ2d 1537, 1539-40 (TTAB 1998); TMEP §1213.03(d).
Business type designations and abbreviations such as “Corporation,” “Inc.,” “Company,” “LLC,” and “Ltd.” or family business designations such as “& Sons” or “Bros.” must be disclaimed, because they merely indicate applicant’s business type or structure and generally have no source-indicating capacity. TMEP §1213.03(d); see, e.g., Goodyear’s India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U.S. 598, 602-03 (1888); In re Piano Factory Grp., Inc., 85 USPQ2d at 1526; In re Patent & Trademark Servs., Inc., 49 USPQ2d at 1539-40.
The wording CORPORATION appears in the applied-for mark.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “CORPORATION” apart from the mark as shown.
For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
Entity
If applicant is an individual, applicant must request that the legal entity be amended to “individual” and must indicate his or her country of citizenship. See TMEP §803.03(a). Alternatively, if applicant is a corporation, applicant must provide the legal name of the corporation and U.S. state or foreign country of incorporation or organization. See TMEP §803.03(c).
If, in response to the above request, applicant provides information indicating that it is not the owner of the mark, registration will be refused because the application was void as filed. See 37 C.F.R. §2.71(d); TMEP §§803.06, 1201.02(b). An application must be filed by the party who owns or is entitled to use the mark as of the application filing date. See 37 C.F.R. §2.71(d); TMEP §1201.02(b).
Specimen
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).
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). Specimens comprising advertising and promotional materials must show a direct association between the mark and the services. TMEP §1301.04(f)(ii).
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, please go to http://www.gov.uspto.report/trademarks/law/specimen.jsp.
Declaration
To submit a verified substitute specimen online via the Trademark Electronic Application System (TEAS), applicant should do the following: (1) answer “yes” to the TEAS response form wizard questions to “submit a new or substitute specimen” and for a “signed declaration,” respectively; (2) attach a jpg or pdf file of the substitute specimen; (3) select the statement that “The substitute specimen(s) was in use in commerce at least as early as the filing date of the application.”; and (4) properly sign the declaration appearing towards the end of the TEAS response form.
To sign the declaration at the end of the TEAS response form, applicant can do one of the following: (1) enter in the signature block any combination of letters, numbers, spaces and/or punctuation marks that the filer has adopted as a signature, placed between two forward slash (/) symbols (e.g., /john doe/); (2) e-mail the completed form from within TEAS to a second party for his/her electronic signature, which will then be automatically returned to the original preparer for submission with the response form; or (3) attach a jpg or pdf image of a declaration under 37 C.F.R. §2.20 together with a pen-and-ink signature. See 37 C.F.R. §§2.33(d), 2.59(a), 2.193(c)(1)(iii); TMEP §804.05. When signing the declaration, applicant must either personally sign or manually enter his/her electronic signature and provide the date of “signing.” TMEP §804.05; see TMEP §804.01(b). Applicant should also set forth the signatory’s name and position beneath the signature. See TMEP §§712 et seq., 804.05.
If applicant experiences difficulty in submitting the required substitute specimen, supporting statement and/or declaration, please e-mail TEAS@uspto.gov for technical assistance regarding the TEAS response form.
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
/Jun, Wendy/
Trademark Examining Attorney
Law Office 103
United States Patent and Trademark Office
571-272-8810
wendy.jun@uspto.gov
RESPONSE GUIDANCE