| To: | Heartbeat Distributors Ltd (kevin@trust-tree.com) |
| Subject: | U.S. Trademark Application Serial No. 88479672 - HB - N/A |
| Sent: | April 03, 2020 03:06:24 PM |
| Sent As: | ecom120@uspto.gov |
| Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 88479672
Mark: HB
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Correspondence Address:
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Applicant: Heartbeat Distributors Ltd
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Reference/Docket No. N/A
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: April 03, 2020
In a previous Office action dated September 11, 2019, the trademark examining attorney refused registration of the applied-for mark based on Trademark Act Section 2(d) for a likelihood of confusion with a registered mark. In addition, applicant was required to satisfy the following requirement: amend the identification of goods and services, and satisfy the multiple-class application requirements.
Based on applicant’s response, the trademark examining attorney notes that the following requirement has been satisfied: amend the identification of goods and services. See TMEP §713.02.
The following requirement has also been obviated: satisfy the multiple-class application requirements. See id.
The following is a SUMMARY OF ISSUES that applicant must address:
· Section 2(d) Refusal – Likelihood of Confusion
· NEW ISSUE: Sections 1 and 45 Refusal – Webpage Specimen does not Include Required URL and Date Printed/Accessed
· NEW ISSUE: Partial Sections 1 and 45 Refusal – Advertising for Goods
· NEW ISSUE: Partial Sections 1 And 45 Refusal –Digitally Altered Images or Mockups for Goods are not Acceptable Specimens
· NEW ISSUE: Partial Sections 1 And 45 Refusal –Digitally Altered Images or Mockups for Services are not Acceptable Specimens
· NEW ISSUE: Additional Information/Documentation about Specimens Required
Applicant must respond to all issues raised in this Office action and the previous September 11, 2019 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).
All previous arguments and evidence, where applicable, are incorporated to this Office action by reference herein.
Section 2(d) Refusal – Likelihood of Confusion
Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services. See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.
Comparison of Marks
Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).
The marks at issue are:
· Application – “HB” in stylized lettering; and
· Registration – “HB” in stylized lettering.
When evaluating a composite mark consisting of lettering and a design, the lettering portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii). Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed. In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).
In the present case, the lettering “HB” is the dominant feature of each of the marks because this lettering is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the parties’ goods and/or services.
Thus, the marks are similar because their dominant features are identical.
Comparison of Goods and/or Services
Determining likelihood of confusion is based on the description of the goods and/or services stated in the application and registration at issue, not on extrinsic evidence of actual use. See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).
The goods and/or services at issue are:
· Application – Cymbals; drums; drum sets; snare drums; drum sticks; hand percussion instruments; conga drums; bongo drums; djembes; musical instrument accessories, namely, stands, pedals for musical instruments, and storage bags; musical instrument cases for drums, guitars, hardware being pedals for musical instruments, cymbals, and drum sticks; Wholesale store services, retail store services, and distribution of samples for publicity purposes all in the fields of musical instruments and music equipment; and
· Registration – Musical instruments; Amplifiers; musical instrument effectors, namely, sound amplifiers; sound mixers; sound mixers with integrated amplifiers; audio amplifiers.
In this case, the registrations uses broad wording to describe “musical instruments,” which presumably encompasses all goods and/or services of the type described, including applicant’s more narrowly identified types of musical instruments, specially including the following goods: Cymbals; drums; drum sets; snare drums; drum sticks; hand percussion instruments; conga drums; bongo drums; djembes; musical instrument accessories, namely, stands, pedals for musical instruments, and storage bags; musical instrument cases for drums, guitars, hardware being pedals for musical instruments, cymbals, and drum sticks. See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). Thus, applicant’s and registrant’s goods are legally identical and related. See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).
Applicant’s Arguments
Applicant argues that the marks are not similar because they are different. In response to this argument, it is noted that when comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.” Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1373, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b). The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks. In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (C.C.P.A. 1971)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b). In the present case, the marks are sufficient similar because their dominant features are identical.
The applicant argues that the marks are not similar because they have different meanings. However, the marks are comprised of the same lettering. Accordingly, the marks are identical in sound, “and have the potential to be used . . . in exactly the same manner.” See In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). Additionally, because the marks are comprised of identical lettering, the marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods and/or services. See id. Thus, applicant’s argument that the marks are not similar because they have different meanings is unpersuasive.
Applicant argues that the different stylization of the marks, their differences in sight, and their different fonts obviate the similarity of the marks. However, as noted above, the lettering in the marks is more dominant that their design features because it will make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the parties’ goods and/or services. Thus, applicant’s argument that the different stylization of the marks obviates their similarity is unpersuasive.
Applicant contends that the marks are not similar because the marks are initialism for different wording, and the applied-for mark correlates with wording not comprised in the applied-for mark. However, the wording the applicant indicates that each mark represents are not part of the marks at issues. Thus, applicant’s contentions that the marks are not similar because the marks are initialism for different wording and the applied-for mark correlates with wording not comprised in the applied-for mark unpersuasive because the wording referenced by the applicant are not parts of the marks.
Applicant contends that the marks have been improperly dissected for purposes of comparison. In response this argument, it is noted that marks must be compared in their entireties and should not be dissected. However, a trademark examining attorney may weigh the individual components of a mark to determine its overall commercial impression. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (“[Regarding the issue of confusion,] there is nothing improper in stating that . . . more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties.” (quoting In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985)). In the instant case, the trademark examining attorney has weighed the individual components of the marks and determined that their overall commercial impressions are similar because their dominant features are identical. Thus, applicant’s argument that the marks have been improperly dissected for purposes of comparison is unpersuasive.
Applicant alleges that the marks are not similar because the registered mark could be viewed as being comprised of numbers rather than letters. In response to this allegation, it is noted that the literal element of the mark in the registration is the lettering “HB” rather than any numbers. See previously provided registration. Moreover, it is notable that the description of the mark in the registration does not reference any numbers. Id. Further, applicant conceded in its response that the registered mark is an initialism for words that start with the letters “H” and “B”. Thus, applicant’s allegation that the marks are not similar because the registered mark could be viewed as being comprised of numbers rather than letters is unpersuasive because the registered mark is not comprised of numbers.
Applicant further contends that the marks are different because the applied-for mark comprises a heart design. However, the applied-for mark does not contain a heart design. Rather, the mark is merely comprised of the stylized lettering “HB”. The fact that the applied-for mark is merely comprised of stylized lettering is evidenced by the description of the mark provided by the applicant in the application, which does not include a reference to a heart design. Thus, applicant’s contention that the marks are different because the applied-for mark comprises a heart design is unpersuasive because the applied-for mark does not comprise a heart design.
Applicant argues that the marks have different sounds. However, as noted above, the marks are comprised of the same lettering. Thus, applicant’s argument that the marks have different sounds is unpersuasive because the same letting in the marks results in marks that have the same sound.
Applicant has submitted a list of registrations. However, the mere submission of a list of registrations or a copy of a private company search report does not make such registrations part of the record. See In re Peace Love World Live, LLC, 127 USPQ2d 1400, 1405 n.17 (TTAB 2018) (citing In re 1st USA Realty Prof’ls, 84 USPQ2d 1581, 1583 (TTAB 2007); In re Duofold Inc., 184 USPQ 638, 640 (TTAB 1974)); TBMP §1208.02; TMEP §710.03.
To make third party registrations part of the record, an applicant must submit copies of the registrations, or the complete electronic equivalent from the USPTO’s automated systems, prior to appeal. In re Star Belly Stitcher, Inc., 107 USPQ2d 2059, 2064 (TTAB 2013); TBMP §1208.02; TMEP §710.03. Accordingly, these registrations will not be considered.
Applicant argues that confusion is not likely because of the lack of evidence of actual confusion. In response to this argument, it is noted that “a showing of actual confusion is not necessary to establish a likelihood of confusion.” In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); TMEP §1207.01(d)(ii). “[T]he relevant test is likelihood of confusion, not actual confusion.” In re Detroit Athletic Co., 903 F.3d 1297, 1309, 128 USPQ2d 1047, 1053 (Fed. Cir. 2018) (emphasis in original). “Uncorroborated statements of no known instances of actual confusion . . . are of little evidentiary value,” especially in ex parte examination. In re Majestic Distilling Co., 315 F.3d 1311, 1317, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003). In the present case, the above-provided analysis demonstrates that confusion is likely. Thus, applicant’s argument that confusion is not likely because of the lack of evidence of actual confusion is unpersuasive.
Summary of Section 2d Refusal
In total: the parties’ marks are similar because their dominant features are identical; the parties’ goods and/or services are available in the same trade channels because neither party has restricted its channels of trade; the parties’ goods and/or services are commercially related because they are legally identical, and the evidence shows that the parties’ goods and/or services are commercially related; and applicant’s arguments that confusion is not likely are unpersuasive. Thus, consumers encountering the marks are likely to confuse them and mistake the underlying sources of the goods and/or services. Accordingly, registration must be refused under Section 2(d) of the Trademark Act.
Applicant must also respond to the following refusal.
Registration is refused because the specimen is not acceptable as a webpage specimen; it lacks the required URL and/or date printed/accessed. See 37 C.F.R. §2.56(c); Mandatory Electronic Filing & Specimen Requirements, Examination Guide 1-20, at V.B. (Rev. Feb. 2020). The specimen thus appears to be in the nature of a digital mockup that fails to show the applied-for mark in actual use in commerce. See 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, 904.03(g), 904.07(a). 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 goods and services 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).
A webpage submitted as a specimen must include the URL and access or print date to show actual use in commerce. 37 C.F.R. §2.56(c). Because the webpage specimen lacks the associated URL and/or access or print date on it, within the TEAS form used to submit the specimen, or in a verified statement in a later-filed response, it is unacceptable to show use of the mark in commerce.
Examples of specimens. Specimens for goods include a photograph of (1) the actual goods bearing the mark; (2) an actual container, packaging, tag or label for the goods bearing the mark; or (3) a point-of-sale display showing the mark directly associated with the goods. See 37 C.F.R. §2.56(b)(1), (c); TMEP §904.03(a)-(m). A webpage specimen submitted as a display associated with the goods must show the mark in association with a picture or textual description of the goods and include information necessary for ordering the goods. TMEP §904.03(i); see 37 C.F.R. §2.56(b)(1), (c).
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).
Response options. Applicant may respond to this refusal by satisfying one of the following for each applicable international class:
(1) Submit a verified statement, in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20 or 28 U.S.C. §1746, specifying the URL of the original webpage specimen and the date it was accessed or printed.
(2) Submit a different specimen (a verified “substitute” specimen), including the URL and date accessed/printed on it, 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 and/or services identified in the application or amendment to allege use. Applicant must also submit 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.”
(3) Amend the filing basis to intent to use under Section 1(b) (which includes withdrawing an amendment to allege use, if one was filed), 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.
Applicant must also respond to the following refusal.
NEW ISSUE: Partial Sections 1 and 45 Refusal – Advertising for Goods
This partial refusal applies to Class 15 only.
Registration is refused because the specimen appears to be mere advertising and does not properly show the applied-for mark as actually used in commerce in International Class 15. 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, 904.04(b), 904.07(a). 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 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).
Specifically, applicant submitted a specimen comprised of a webpage advertising the applicant’s goods.
Advertising is not acceptable as a specimen for goods. See In re Siny Corp., 920 F.3d 1331, 1336, 2019 USPQ2d 127099, at *2-3 (Fed. Cir. 2019) (citing Powermatics, Inc. v. Globe Roofing Prods. Co., 341 F.2d 127, 130, 144 USPQ 430, 432 (C.C.P.A. 1965)); see also Avakoff v. S. Pac. Co., 765 F.2d 1097, 1098, 226 USPQ 435, 436 (Fed. Cir. 1985); TMEP §904.04(b), (c). Advertising includes online advertising banners appearing on search-engine results pages or in social media, advertising circulars and brochures, price lists, and business cards. See TMEP §904.04(b).
Examples of specimens. Specimens for goods include a photograph of (1) the actual goods bearing the mark; (2) an actual container, packaging, tag or label for the goods bearing the mark; or (3) a point-of-sale display showing the mark directly associated with the goods. See 37 C.F.R. §2.56(b)(1), (c); TMEP §904.03(a)-(m). A webpage specimen submitted as a display associated with the goods must show the mark in association with a picture or textual description of the goods and include information necessary for ordering the goods. TMEP §904.03(i); see 37 C.F.R. §2.56(b)(1), (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 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) (which includes withdrawing an amendment to allege use, if one was filed), 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.
Applicant must also respond to the following refusal.
This partial refusal applies to Class 15 only.
Registration is refused because the specimens appears to consist of a digitally created or altered images or a mockups of a depiction of the mark on the goods or their packaging and does not show the applied-for mark as actually used in commerce in International Classes 15. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a), (c); TMEP §§904.04(a), 904.07(a).
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 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). “Use in commerce” means (1) a bona fide use of the applied-for mark in the ordinary course of trade (and not merely to reserve a right in the mark), (2) the mark is placed in any manner on the goods, packaging, tags or labels affixed to the goods, or displays that directly associate the mark with the goods and have a point-of-sale nature, and (3) the goods are actually sold or transported in commerce. See 15 U.S.C. §1127.
An image of a product or packaging that has been digitally created or altered to include the mark or a mockup of how the mark may be displayed on the product or packaging is not a proper specimen for goods because it does not show actual use of the mark in commerce. See 15 U.S.C. §1127; 37 C.F.R. §2.56(c); TMEP §904.04(a).
In this case, the specimens appear to be a mock-up/digitally altered because the marks appear to float over the goods shown on the specimens, features of the goods disappear near or around the marks on the goods, the images include pixelization around the marks, and the marks are not applied to the goods in a manner consistent with the material composition of the goods. Therefore, the specimens do not show actual use of the mark in commerce.
Applicant must also respond to the following refusal.
NEW ISSUE: Partial Sections 1 And 45 Refusal – Digitally Altered Images or Mockups for Services are not Acceptable Specimens
This partial refusal applies to Class 35 only.
Registration is refused because the specimen appears to consist of a digitally altered image or a mockup of a depiction of the mark on a webpage and does not show the applied-for mark as actually used in commerce in International Class 35. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a), (c); TMEP §§904, 904.07(a), 1301.04(a), (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 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); 1301.01 et seq. “Use in commerce” means (1) a bona fide use of the applied-for mark in the ordinary course of trade (and not merely to reserve a right in the mark), (2) the mark is used in the sale, advertising, or rendering of the services, and (3) the services are actually rendered in commerce. See 15 U.S.C. §1127.
An image of business signage, such as on a storefront or delivery van, or a webpage that has been digitally created or altered to include the mark, or a mockup of how the mark may be displayed, is not a proper specimen for services because it does not show actual use of the mark in commerce. Similarly, a website showing the mark for the services that applicant is not currently engaged in selling, advertising, or rendering is not a proper specimen. See 15 U.S.C. §1127; 37 C.F.R. §2.56(c); TMEP §§904.07(a), 1301.04(g)(i).
In this case, the specimen appears to be a mock-up/digitally altered because the website screenshot showing the mark is missing important information such as a URL and browser tab, and specimen is shown with what appears to be side-by-side cutout images of multiple websites on a single page. Therefore the specimen does not show actual use of the mark in commerce.
NEW ISSUE: Additional Information/Documentation about Specimens Required
To permit proper examination of the application record for compliance with use in commerce requirements, applicant must respond to the following requests for information and documentation about the specimen(s). See 37 C.F.R. §2.61(b); TMEP §814. Answer for each specimen/photograph/image previously provided. For any website source submitted as supporting evidence, provide a digital copy of the entire webpage from top to bottom, as rendered in an Internet browser, that includes the URL and access or print date. TMEP §710.01(b) (citing In re I-Coat Co., 126 USPQ2d 1730, 1733 (TTAB 2018)).
(1) Identify the particular good(s) listed in the application for which the specimen(s) was submitted to show use of the mark.
(2) Explain whether the specimen was created for submission with this application. If so, specify the date each specimen was created. If applicant used the image(s) of the goods shown in the specimen(s) from a third-party website, provide the URL of the website and a digital copy of relevant webpage(s) for each image.
(3) Provide information about and examples of how applicant’s goods appear in the actual sales environment.
(a) If sold in stores, provide a representative sample of the name(s) of the stores and of photographs showing the goods for sale in the named stores, such as photographs of the sales displays or goods on shelves with the mark.
(b) If sold online, provide a representative sample of the name(s) of the online retailers, the website URL(s) for each named retailer, and a digital copy of the webpages showing the goods for sale on the named website.
(c) If sold in another type of sales environment (e.g., catalogs, trade shows), identify the environment and provide photographs and/or documentation showing the goods for sale in that environment.
(4) If the information in question (3) about how the goods appear in the actual sales environment is not available to applicant, please describe how applicant’s goods are sold or transported and provide photographs and other documentation showing how applicant’s mark appears on the goods and/or its packaging when the goods are sold or transported to or within the United States.
(5) For each category of sales environment specified in response to questions (3) and (4), specify when the goods bearing the mark were first available for purchase within the United States, the date of the first sale of the goods to or within the United States, and whether the goods are still for sale to or within the United States in that environment.
(6) For the goods identified in response to question (1), specify the dollar amount of sales with or within the United States and provide at least three invoices or other supporting documentation that show payments or other consideration made, redacting personal or private information of buyers as necessary.
Applicant must also note the following.
Response Options for Digitally Altered Image/Mockup Specimen Issues
Applicant may respond to the specimen refusal by satisfying one of the following for each applicable international class:
(1) Submit the additional information/documentation referenced above establishing that the original specimen was actually used in commerce as of the filing date of the application or prior to the filing of the amendment to allege use.
(2) 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. For instructions on how to submit a different specimen using the online Trademark Electronic Application System (TEAS) form, see the Specimen webpage.
Applicant must also fully respond to the requirement for additional information and documentation referenced above for any different specimen provided. Failure to comply with a requirement to furnish information is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814. Merely stating that information is available on applicant’s or a third party website or providing a hyperlink of such a website is an insufficient response and will not make the additional information or materials of record. See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).
(3) Amend the filing basis to intent to use under Section 1(b) (which includes withdrawing an amendment to allege use, if one was filed), as no specimen is required before publication. This option will later necessitate additional fee(s) and filing requirements, including a specimen.
If applicant amends the basis, the requirement for additional information and documentation referenced above will be withdrawn.
Conclusion
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.
How to respond. Click to file a response to this nonfinal Office action.
/Joshua S. Toy/
Trademark Examining Attorney
Law Office 120
571-272-4856
joshua.toy@uspto.gov
RESPONSE GUIDANCE