To: | Gordon Murray Design Limited (psawicki@wck.com) |
Subject: | U.S. Trademark Application Serial No. 88464278 - ISTREAM - G111.6004US1 |
Sent: | February 18, 2020 05:08:41 PM |
Sent As: | ecom114@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88464278
Mark: ISTREAM
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Correspondence Address: WESTMAN, CHAMPLIN & KOEHLER, P.A. 121 South Eighth Street, Suite 1100
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Applicant: Gordon Murray Design Limited
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Reference/Docket No. G111.6004US1
Correspondence Email Address: |
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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: February 18, 2020
This Office Action is in response to applicant’s communication filed on February 13, 2020.
INTRODUCTION
The following refusal is maintained and continued:
And applicant’s response raises the following issues:
SPECIMEN REFUSAL – DOES NOT SHOW USE WITH IDENTIFIED SERVICES
Specimen does not show direct association between mark and services. Registration is refused because the substitute specimen does not show a direct association between the mark and the services and fails to show the applied-for mark as actually used in commerce with the identified services in International Class 042. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a), (b)(2); TMEP §§904, 904.07(a), 1301.04(f)(ii), (g)(i). An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark as actually used in commerce for each international class of services 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).
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 936, 942, 121 USPQ2d 1122, 1126 (Fed. Cir. 2016) (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. See 37 C.F.R. §2.56(b)(2); In re Universal Oil Prods. Co., 476 F.2d 653, 655, 177 USPQ2d 456, 457 (C.C.P.A. 1973); TMEP §1301.04(f)(ii).
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 The Cardio Grp., LLC, 2019 USPQ2d 227232, at *2 (TTAB 2019) (quoting In re WAY Media, LLC, 118 USPQ2d 1697, 1698 (TTAB 2016)); 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 substitute specimen does not show a direct association between the mark and services in that there is nothing on the substitute specimen making it clear that the applied-for mark, namely, ISTREAM, is being used in connection with providing any of the identified design, development and consulting services in class 042. Specifically, the invoice specimen shows proper use of the mark GORDON MURRAY DESIGN, not the applied-for mark. Further, the wording in the specimen that is around the applied-for mark, namely, “…Study for a Zero Emissions vehicle” is not sufficient to make a direct association as to what exactly the respective services are.
Examples of specimens. Specimens for services must show a direct association between the mark and the services and include: (1) copies of advertising and marketing material, (2) a photograph of business signage or billboards, or (3) materials showing the mark in the sale, rendering, or advertising of the services. See 37 C.F.R. §2.56(b)(2), (c); TMEP §1301.04(a), (h)(iv)(C). Any webpage printout or screenshot submitted as a specimen must include the webpage’s URL and the date it was accessed or printed. 37 C.F.R. §2.56(c).
Response options. Applicant may respond to this refusal by satisfying one of the following for the respective 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 and (b) shows the mark in actual use in commerce for the services 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.
(2) Amend the filing basis to intent to use under Section 1(b) as no specimen is required before publication. This option will later necessitate additional fee(s) and filing requirements, including a specimen.
For an overview of the response options referenced above and instructions on how to satisfy these options using the online Trademark Electronic Application System (TEAS) form, see the Specimen webpage.
REQUEST FOR INFORMATION ON VALIDITY OF USE IN UNITED STATES COMMERCE – RESPONSE REQUIRED
For example, a service mark may be used in such commerce for services when: (1) services are rendered across state lines, in more than one state, or to out-of-state customers; (2) customers travel across state lines in response to advertising and the nature of the services is such that it has a substantial effect on interstate commerce (e.g., service stations on interstate highways); (3) an applicant’s licensees or franchisees are located in more than one state, and the licensees or franchisees use the mark; or (4) an applicant’s services are offered via the Internet. See TMEP §901.03.
Applicant may respond to this issue by satisfying one of the following:
(1) A verified statement in an affidavit or signed declaration under 37 C.F.R. §2.20 that “the mark is in use in commerce that can be regulated by the U.S. Congress.”
(2) A request to amend the application basis to a bona fide intention to use the mark in commerce under Trademark Act Section 1(b), if permitted by 37 C.F.R. §2.35.
TMEP §901.04.
Failure to comply with a request for information is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.
RESPONSE GUIDELINES
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
How to respond. Click to file a response to this nonfinal Office action.
/Adetayo J. Adeyiga/
Trademark Examining Attorney
Law Office 114
(571) 272-7089
adetayo.adeyiga@uspto.gov
RESPONSE GUIDANCE