To: | Guangzhou Aika Automotive Lighting Co.,L ETC. (tm@kafiling.com) |
Subject: | U.S. Trademark Application Serial No. 88475682 - GCAR - 60-596-TUS |
Sent: | February 10, 2020 05:09:20 PM |
Sent As: | ecom108@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88475682
Mark: GCAR
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Correspondence Address:
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Applicant: Guangzhou Aika Automotive Lighting Co.,L ETC.
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Reference/Docket No. 60-596-TUS
Correspondence Email Address: |
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FINAL 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) 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: February 10, 2020
INTRODUCTION
This Office action is in response to applicant’s communication filed on 01/06/2020.
In a previous Office action dated 09/17/2019, the trademark examining attorney refused registration of the applied-for mark based on the following: failure to show the applied-for mark in use in commerce with any of the specified goods. In addition, applicant was required to satisfy the following requirement(s): hire a U.S.-licensed attorney and provide information about the specimen.
Based on applicant’s response, the trademark examining attorney notes that the following requirements have been satisfied: hire a U.S.-licensed attorney and provide information about the specimen. See TMEP §§713.02, 714.04.
Further, the trademark examining attorney maintains and now makes FINAL the specimen refusal in the summary of issues below. See 37 C.F.R. §2.63(b); TMEP §714.04.
SUMMARY OF ISSUES MADE FINAL that applicant must address:
Registration is refused because the specimen does not show the applied-for mark in use in commerce in International Class 11. 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 specimen of a webpage display is not an acceptable display associated with the goods because the currency for purchasing the good is displayed in Euros and not in Dollars. Use of a mark in a foreign country does not give rise to rights in the United States if the goods or services are not sold or rendered in the United States. Linville v. Rivard, 41 USPQ2d 1731 (TTAB 1996), aff’d, 133 F.3d 1446, 45 USPQ2d 1374 (Fed. Cir. 1998); Aktieselskabet af 21.November 2001 v. Fame Jeans Inc., 77 USPQ2d 1861 (TTAB 2006); Buti v. Impressa Perosa S.R.L., 139 F.3d 98, 45 USPQ2d 1985 (2d Cir. 1998); Mother’s Rests. Inc. v. Mother’s Bakery, Inc., 498 F. Supp. 847, 210 USPQ 207 (W.D.N.Y. 1980); see also Honda Motor Co., v. Winkelmann, 90 USPQ2d 1660 (TTAB 2009) (“[T]he evidence that applicant relies upon through its foreign registrations and Internet printouts does not demonstrate trademark use for the claimed goods. Further, these documents do not show that applicant has an intent to use the mark in the United States.”).
Here, because the webpage display shows the purchasing currency in Euros, it appears applicant’s goods are only available in a foreign country. See TMEP §901.03 (stating “[t]he USPTO presumes that an applicant who states that the mark is in use in commerce is stating that the mark is in use in a type of commerce that the U.S. Congress can regulate, unless there is contradictory evidence in the record”) (emphasis added). Thus, applicant’s substitute specimen is not acceptable and applicant must now show “the mark is in use in commerce that can be regulated by the U.S. Congress.”
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.
RESPONSE OPTIONS
Applicant must respond within six months of the date of issuance of this final Office action or the application will be abandoned. 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a). Applicant may respond by providing one or both of the following:
(1) A request for reconsideration that fully resolves all outstanding requirements and refusals; and/or
(2) An appeal to the Trademark Trial and Appeal Board with the required filing fees.
TMEP §715.01; see 37 C.F.R. §2.63(b)(1)-(2).
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 request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).
/Salima Parmar Oestreicher/
Salima Parmar Oestreicher
Examining Attorney
Law Office 108
(571) 272-6786
Salima.Oestreicher@uspto.gov
RESPONSE GUIDANCE