Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

NONFINAL 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).  A link to the appropriate TEAS response form appears at the end of this Office action. 

 

 

Issue date:  July 24, 2019

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issues below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

SEARCH OF OFFICE’S DATABASE OF 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).

 

SUMMARY OF ISSUES:

• Sections 1 and 45 Refusal – Mark on Drawing and Specimen Differ
• Partial Sections 1 and 45 Refusal – Specimen Does Not Show Use in Commerce with Identified Goods in Class 5
• Disclaimer Required
• Amended Color Claim and Description of Mark Required
• Advisory: Phantom Mark

 

SECTIONS 1 AND 45 REFUSAL – MARK ON DRAWING AND SPECIMEN DIFFER

 

Registration is refused because the specimen does not show the mark in the drawing in use in commerce in International Classes 5 and 21, 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 specimen displays only the middle third of the mark from the drawing on the front of applicant’s packaging, and does not show the vertical green rectangle, the four images of flies, or the circular design on the left side of the drawing, nor does it show the two images of the trapping device hanging outdoors on the right side of the drawing.  The mark on the specimen and in the drawing do not match because the mark on the specimen is only a portion of the mark appearing on the drawing.

 

Furthermore, the specimen displays the mark as incorporating the large wording “TRAPSTIK” above the wording “FOR BITING FLIES” in slightly smaller text, above the smaller thinner stylized wording “STICK IT TO BITING FLIES”. However, the drawing displays the mark without the largest stylized wording “TRAPSTIK”.  Therefore, the mark on the specimen also does not match the mark in the drawing because it contains additional large wording elements.  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 different specimen (a verified “substitute” specimen) for each applicable international class that (a) shows the mark in the drawing in actual use in commerce for the goods in the application or amendment to allege use, and (b) 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.

 

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). 

 

(2)       Submit a request to 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.

 

The USPTO will not accept an amended drawing submitted in response to this refusal because the changes would materially alter the drawing of the mark in the original application or as previously acceptably amended.  See 37 C.F.R. §2.72(a)-(b); TMEP §807.14.  Specifically, amending the drawing to include the additional wording depicted on the specimen would constitute a material alteration because the mark would then have a different commercial impression requiring a new search of the USPTO database.

 

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.

 

Applicant should note the following additional ground for refusal.

 

PARTIAL SECTIONS 1 AND 45 REFUSAL – SPECIMEN DOES NOT SHOW USE IN COMMERCE WITH IDENTIFIED GOODS IN CLASS 5

 

Registration is refused because the specimen does not show the applied-for mark in use in commerce in International Class 5.  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).  Specifically, the specimens provided appear to depict applicant’s “insect traps” in Class 21 but do not depict applicant’s identified goods of “biopesticides for domestic use” in Class 5.

 

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 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 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).  However, leaflets, handbills, advertising circulars, and other advertising materials generally are not acceptable specimens for 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 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.

 

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.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.  However, if applicant responds to the refusal, applicant must also respond to the requirements set forth below.

 

DISCLAIMER REQUIRED

 

Applicant must provide a disclaimer of the unregistrable parts of the applied-for mark even though the mark as a whole appears to be registrable.  See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a).  A disclaimer of an unregistrable part of a mark will not affect the mark’s appearance.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965).

 

In this case, applicant must disclaim the wording “FOR BITING FLIES” because it is not inherently distinctive.  These unregistrable terms at best are merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods.  See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a). 

 

The attached evidence from Merriam-Webster Dictionary shows the wording “FOR” is a preposition used as a function word to indicate purpose or to indicate the object or recipient of a perception, desire, or activity, and “BITING FLIES” is the plural of “BITING FLY”, which means “a dipteran fly (as a mosquito, midge, or horsefly) having mouthparts adapted for piercing and biting”:

• http://www.merriam-webster.com/dictionary/for
• http://www.merriam-webster.com/medical/biting%20flies

 

The following additional attached Internet evidence shows the wording is commonly used in connection with related goods and services to indicate that they are for the control or elimination of biting flies:

• http://www.orkin.com/flies/biting-flies
• http://www.ortho.com/en-us/library/garden/how-combat-biting-flies
• http://www.earthpestcontrolservices.com/identify-pests/biting-flies/

 

Applicant’s goods are biopesticides for domestic use and insect traps. Thus, the wording merely describes a purpose of applicant’s goods because they are intended for use against biting flies.

 

In addition, applicant must disclaim the designs of the flies because they are not inherently distinctive.  The unregistrable designs at best are merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods.  See 15 U.S.C. §§1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a), (c). In addition, see the enclosed excerpts from Wikipedia.

 

Applicant may respond to this issue by submitting a disclaimer in the following format: 

 

No claim is made to the exclusive right to use “FOR BITING FLIES” and the designs of the flies 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. 

 

AMENDED COLOR CLAIM AND DESCRIPTION OF MARK REQUIRED

 

Applicant must submit an amended description of the mark because the current one is incomplete and does not describe all the significant aspects of the mark.  37 C.F.R. §2.37; see TMEP §§808.01, 808.02.  Descriptions must be accurate and identify all the literal and design elements in the mark.  See 37 C.F.R. §2.37; TMEP §§808 et seq. 

 

Applicant must also clarify the colors that are being claimed as a feature of the mark.  See 37 C.F.R. §§2.37, 2.52(b)(1), 2.61(b); TMEP §§807.07(a) et seq.  The drawing shows the mark in the colors gray, green, light green, blue, light blue, pink, yellow, red, brown, black and white; however, only the following colors appear in the color claim and description of the mark:  gray, green, light green, blue, light blue and black. 

 

Where the color claim and/or description of the mark and drawing are inconsistent with one another, generally the USPTO looks to the drawing to determine what the mark is.  TMEP §807.07(a)(i)-(a)(ii), (c).  Additionally, the colors in the drawing, color claim, and description must match.  See 37 C.F.R. §2.52(b)(1); TMEP §§807.07 et seq. 

 

To clarify the colors in the mark, applicant may satisfy one of the following:

 

(1)       Submit a new color drawing that shows the mark in the colors specified in the color claim and description.  TMEP §807.07(c).  However, any other amendments to the drawing will not be accepted if they would materially alter the mark.  37 C.F.R. §2.72; see TMEP §§807.07(c), 807.14 et seq.

 

(2)       Submit an amended color claim and description that matches the colors in the drawing.  Generic color names must be used to describe the colors in the mark, e.g., red, yellow, blue.  TMEP §807.07(a)(i)-(ii).  If black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark, applicant must so specify in the description.  See TMEP §807.07(d). 

 

The following color claim and description are suggested:

 

Color claim:  “The gray, green, light green, blue, light blue, pink, yellow, red, brown, black and white are claimed as a feature of the mark.”

 

Description:  “The mark consists of two-dimensional packaging. On the left there is a vertically oriented green rectangle that runs the length of the mark from top to bottom. Beginning at slightly above the middle of the green rectangle on right edge and extending to the right edge of the mark is an irregular green arch that rises and then falls ending at the far edge of mark approximately half way up from the bottom of the edge. Above the green arch is a gray field with diagonal white and gray lines and boxes. Above the green arch are the words in black "FOR BITING FLIES" in large type and below those words in smaller black, stylized type are the words "STICK IT TO BITING FLIES". Above the words is a stylized image of a black fly with brown wings. To the left of the fly image is a circle containing a light green, blue and light blue pixilated pattern. Under the green arch, on top of a yellow background with white dots, is a partial image of the fly trapping device with a blue top and a light green, green, blue and light blue pixilated pattern. To the right of the device is a small white square with a curved right edge. To the left of the partial trapping device are four rectangles with white borders containing photographs of flies. The top image shows a black fly with brown wings on a white background. The image below that shows a green and black fly on top of a pink background. The image below that shows a brown and black fly on top of a pink image with a black and gray background. The image below that shows a black and gray fly on top of a pink background. To the right of the partial image of the trapping device are two images of complete fly trapping devices with a blue top and a light green, green, blue and light blue pixilated pattern hanging in outdoor settings. The left image of the hanging trap shows a gray and brown fence in the background with green and brown leaves hanging over it and positioned behind the fence. The right image of a hanging trap shows the trap hanging to the left of a red barn door with white trim and a gray hinge in an outdoor setting, with a light blue sky, blue mountains, brown dirt, gray pavement, and green trees in the background.

 

For more information about drawings and instructions on how to submit a new color drawing, amended color claim and/or description online using the Trademark Electronic Application System (TEAS) form, see the Drawing webpage.

 

ADVISORY: PHANTOM MARK

 

The disagreement between the mark on the drawing and the mark on the specimen appears to indicate that the mark may have a missing, or “phantom”, element that is subject to change.

 

Marks that contain phantom elements do not provide sufficient notice to potential consumers and businesses of what the mark consists of when it is actually used in commerce.  See TMEP §1214.01.  Registering these marks could cause confusion about the source of products sold under the mark and prevent business owners from being able to rely on the federal trademark register when adopting their own marks for goods or services.  See id.

 

As the [U.S. Court of Appeals for the Federal Circuit] discussed in [In re Int’l Flavors & Fragrances Inc., 183 F.3d 1361, 51 USPQ2d 1513 (Fed. Cir. 1999)], a primary purpose of registration is to provide notice to potential users of the same or a confusingly similar mark, and that to serve this purpose, the mark, as registered, must accurately reflect the way it is used in commerce so that someone who searches the registers of the USPTO for the mark, or a similar mark, will locate the registered mark.  The [Federal Circuit] further stated . . . that “phantom” marks with missing elements “encompass too may combinations and permutations to make a thorough and effective search possible.  The registration of such marks does not provide proper notice to other trademark users, thus failing to help bring order to the marketplace and defeating one of the vital purposes of federal trademark registration.”

 

In re Primo Water Corp., 87 USPQ2d 1376, 1378 (TTAB 2008). 

 

RESPONSE GUIDELINES

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

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.  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  

 

 

/Ray Harmon/

Trademark Examining Attorney

Law Office 103

(571) 272-0386

raymond.harmon@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 July 24, 2019 for

U.S. Trademark Application Serial No. 88463165

 

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. 

 

 

/Ray Harmon/

Trademark Examining Attorney

Law Office 103

(571) 272-0386

raymond.harmon@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 July 24, 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.”