To: | One Source Suppliers Inc (davidlipsker@gmail.com) |
Subject: | U.S. Trademark Application Serial No. 88472998 - SCREENASSURE - N/A |
Sent: | October 07, 2019 03:07:07 PM |
Sent As: | ecom110@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88472998
Mark: SCREENASSURE
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Correspondence Address: |
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Applicant: One Source Suppliers Inc
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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) 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: October 07, 2019
This Office action is in response to applicant’s communication filed on September 12, 2019.
In a previous Priority action dated September 12, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following: Refusal under Sections 1 & 45 of the Trademark Act- Specimen Omitted. In addition, applicant was required to satisfy the following requirement: Application not Signed or Verified- Signature & Verification Required.
Based on applicant’s response, the trademark examining attorney notes that the following requirement has been satisfied: Application not Signed or Verified- Signature & Verification Required. See TMEP §§713.02, 714.04.
However, the trademark examining attorney maintains and now makes FINAL the refusal below. See 37 C.F.R. §2.63(b); TMEP §714.04.
REFUSAL UNDER SECTIONS 1 & 45 OF THE TRADEMARK ACT- SPECIMEN NOT ACCEPTABLE- SPECIMEN DOES NOT SHOW APPLIED-FOR MARK ASSOCIATED WITH IDENTIFIED GOODS- REFUSAL MAINTAINED AND MADE FINAL
In the first Office action, registration was refused because a specimen was not submitted with the application, which was filed as a Section 1(a) use-based application. In its response, the applicant submitted a specimen; however, the specimen is not acceptable, and thus the refusal to register the applied-for mark is maintained and made final as follows. See 37 C.F.R. §2.63(b); TMEP §§904, 904.07(a), 1301.04(d), (g)(i).
Specifically, the applied-for mark appears on a sticker that states “INCLUDES ScreenAssuresm REPAIR GUARANTEE $300 * 1 Year See Details.” Further, the sticker appears on the product packaging for a screen or case for mobile phones. As shown on the specimen, the applied-for mark “SCREENASSURE” is associated with a warranty service rather than the screen or case for a mobile phone, which is marketed under the “NANOFIXIT” mark. Therefore, the specimen does not show the applied-for mark associated with any of the goods in Class 09 in the application, but rather it is associated with warranty services for a screens or case for mobile phones.
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).
Therefore, refusal to register the applied-for mark is properly made final under Sections 1 and 45 of the Trademark Act.
RESPONSE OPTIONS
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.
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 final Office action and/or appeal it to the Trademark Trial and Appeal Board (TTAB)
/Deborah L. Meiners/
Attorney Advisor
Law Office 110
(571) 272-8993
Deborah.Meiners@USPTO.gov
RESPONSE GUIDANCE