To: | Wang, Weijie (trademarks@branding-law.com) |
Subject: | U.S. Trademark Application Serial No. 88455057 - UNIBRILLIA - N/A |
Sent: | November 18, 2019 01:46:27 PM |
Sent As: | ecom105@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88455057
Mark: UNIBRILLIA
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Correspondence Address: 1300 PENNSYLVANIA AVE., N.W.; STE. 700
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Applicant: Wang, Weijie
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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: November 18, 2019
This Office action is supplemental to the previous Office action issued on August 19, 2019 in connection with this application. Based on information and/or documentation in applicant’s response, the trademark examining attorney now issues the following new refusal: Sections 1 and 45 Refusal—Premature Use. See TMEP §§706, 711.02.
In the previous Office action, the trademark examining attorney refused registration of the applied-for mark based on an unacceptable specimen. In addition, applicant was required to respond to a request for information. Applicant responded by providing substitute specimens and responses to the request for information. The request for information requirement has been satisfied. The specimen refusal is CONTINUED and MAINTAINED.
The following is a SUMMARY OF ISSUES that applicant must address:
• NEW ISSUE: Sections 1 and 45 Refusal—Premature Use
SECTIONS 1 AND 45 REFUSAL—PREMATURE USE
The use or display of a mark in the sale or advertising of goods before the goods are actually created or provided or the services rendered does not show use in commerce. See Couture v. Playdom, Inc., 778 F.3d 1379, 1380-82, 113 USPQ2d 2042, 2043-44 (Fed. Cir. 2015); In re Cedar Point, Inc., 220 USPQ 533 (TTAB 1983); TMEP §§904, 1301.03(a).
If applicant’s goods were being sold or transported or the services were being rendered in commerce as of the application filing date, applicant must submit the following:
(1) A substitute specimen showing the applied-for mark in use in commerce for the goods and/or services specified in the application.
(2) The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “The substitute specimen was in use in commerce at least as early as the application filing date.” 37 C.F.R. §2.59(a); TMEP §904.05; see 37 C.F.R. §2.193(e)(1). If submitting a substitute specimen requires an amendment to the dates of use, applicant must also verify the amended dates. 37 C.F.R. §2.71(c); TMEP §904.05.
If applicant did not use the applied-for mark in commerce on or before the filing date, applicant may substitute a different basis for filing if applicant can meet the requirements for the new basis. In this case, applicant may wish to amend the application to assert a Section 1(b) basis. See TMEP §806.03(c). However, if applicant amends the basis to Section 1(b), registration will not be granted until applicant later amends the application back to use in commerce by filing an acceptable allegation of use with a proper specimen. See 15 U.S.C. §1051(c), (d); 37 C.F.R. §§2.76, 2.88; TMEP §1103. If the same specimen is submitted with an allegation of use, the same refusal will issue.
To amend to Section 1(b), applicant must submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “Applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date.” 37 C.F.R. §2.34(a)(2); TMEP §806.01(b); see 15 U.S.C. §1051(b); 37 C.F.R. §§2.35(b)(1), 2.193(e)(1).
Applicant must respond to all issues raised in this Office action and the previous Office action, within six (6) months of the date of issuance of this Office action. 37 C.F.R. §2.62(a); see TMEP §711.02. If applicant does not respond within this time limit, the application will be abandoned. 37 C.F.R. §2.65(a).
ASSISTANCE
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
Robert N. Guliano
/Robert N. Guliano/
robert.guliano@uspto.gov
571-272-0174
RESPONSE GUIDANCE