| To: | XUP (matt@xupapp.com) |
| Subject: | U.S. Trademark Application Serial No. 88484274 - XUP - N/A |
| Sent: | September 12, 2019 11:52:17 AM |
| Sent As: | ecom128@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. 88484274
Mark: XUP
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Correspondence Address:
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Applicant: XUP
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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). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: September 12, 2019
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
MARK DIFFERS ON DRAWING AND SPECIMEN - REFUSAL
Registration is refused because the specimen does not show the mark in the drawing in use in commerce in International Classes 41 and 42, 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 the mark as XUP (with design), all in color with the mark shown in pink gradient to blue with the wording in color. However, the drawing displays the mark as XUP (with design), with the color in the mark being in the lower triangle and the wording “XUP” in black. The mark on the specimen does not match the mark in the drawing because the mark in the specimen appears completely in color, where the mark on the drawing shows the wording and upper triangle in black. Additionally, the colors within the lower triangle of the design do not match. 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 new drawing of the mark that shows the mark on the specimen and, if appropriate, an amendment of the description and/or color claim that agrees with the new drawing. See 37 C.F.R. §2.72(a)-(b). The following amended description is suggested, if accurate: “The mark consists of two triangles, with the top triangle pointing down, outlined in pink to red to violet gradient from left to right; the bottom triangle appears pointing up with an incomplete point at the top, completely shaded in pink to red to violet gradient from left to right; the wording “XUP” appears to the right of the two triangle design, in violet to blue to teal gradient from left to right; the color white represents background only and is not a feature of the mark” Applicant may amend the mark in the drawing to match the mark on the specimen but may not make any other changes or amendments that would materially alter the drawing of the mark. See 37 C.F.R. §2.72(a)-(b); TMEP §807.14.
(2) 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 services 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 services include advertising and marketing materials, brochures, photographs of business signage and billboards, and webpages that show the mark used in the actual sale, rendering, or advertising of the services. See TMEP §1301.04(a), (h)(iv)(C).
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.
PARTIAL SPECIMEN REFUSAL – CLASS 42
PLEASE NOTE: If the drawing is amended to match the specimen, as outlined above, the current specimen of record would not be acceptable for Class 42, as outlined below.
Registration is refused because the specimen does not show the applied-for mark in use in commerce in International Class(es) 42. 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). Specifically, the specimen provided does not show any connection to the applied-for services, or, creating an online community for the purpose of matchmaking.
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 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).
Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and webpages that show the mark used in the actual sale, rendering, or advertising of the services. See TMEP §1301.04(a), (h)(iv)(C). Specimens comprising advertising and promotional materials must show a direct association between the mark and the services. TMEP §1301.04(f)(ii).
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 services 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.
IDENTIFICATION OF SERVICES – REQUIRED – CLASS 42
PLEASE NOTE: Applicant’s identification of services for International Class 41 require no changes. The following requirement applies to applicant’s services in International Class 42 only.
Applicant must clarify some of the wording in the identification of services because it is indefinite. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. This wording is indefinite because it does not make clear the exact nature of the services. Applicant must amend the identification to specify the common commercial or generic name of the services. See TMEP §1402.01. If the services have no common commercial or generic name, applicant must describe or explain the nature of the services using clear and succinct language. See id.
Applicant should note that any wording in bold, in italics, underlined and/or in ALL CAPS below offers guidance and/or shows
the changes being proposed for the identification of services. If there is wording in the applicant’s version of the identification of services which should be
removed, it will be shown with a line through it such as this: strikethrough. When making its amendments,
applicant should enter them in standard font, not in bold, in italics, underlined or in ALL CAPS.
Applicant may substitute the following wording, if accurate:
Class 41: [NO CHANGES]
Class 42: Creating an on-line community for _____ {indicate specific user, e.g., athletes, single men and women} events for the
purpose of matchmaking events
See TMEP §§1402.01, 1402.03.
An applicant may only amend an identification to clarify or limit the services, but not to add to or broaden the scope of the services. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07. Generally, any deleted services may not later be reinserted. See TMEP §1402.07(e).
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
Applicant should note the following additional requirement outlined below.
COLOR CLAIM – REQUIRED
The following color claim is suggested if the applicant chooses to maintain the current drawing of the mark, if accurate: “The colors black, red, violet, teal is/are claimed as a feature of the mark.” TMEP §807.07(a)(i).
The following color claim is suggested if the applicant chooses to change the drawing to match the specimen, as outlined above, if accurate: “The colors pink, red, violet, blue, and teal is/are claimed as a feature of the mark.” TMEP §807.07(a)(i).
Applicant should note the following additional requirement outlined below.
MARK DESCRIPTION – REQUIRED
To clarify how white is being used in the mark, applicant may satisfy one of the following:
(1) If white is a feature of the mark, applicant must amend the color claim to include it and amend the description to identify where white appears in the literal and/or design elements of the mark. The following color claim and description are suggested for the current drawing of record, if accurate:
Color claim: “The colors red, violet, teal, black, and white are claimed as a feature of the mark.”
Description: “The mark consists of the following: two triangles on top of one another, with the top triangle pointing down, outlined in black with a white background; the bottom triangle appears pointing up, completely shaded in red, violet, and teal; the wording “XUP” appears to the right of the design in black.”
(2) If white is not a feature of the mark, applicant must amend the description to state that white represents background, outlining, shading and/or transparent areas and is not part of the mark. The following description is suggested, if accurate:
“The mark consists of the following: two triangles on top of one another, with the top triangle pointing down, outlined in black; the bottom triangle appears pointing up, completely shaded in red, violet, and teal; the wording “XUP” appears to the right of the design in black; the color white represents background only and is not a feature of the mark.”
TMEP §807.07(d).
RESPONSE GUIDELINES
Because of the legal technicalities and strict deadlines of the trademark application process, applicant may wish to hire a private attorney who specializes in trademark matters to assist in the process. The assigned trademark examining attorney can provide only limited assistance explaining the content of an Office action and the application process. USPTO staff cannot provide legal advice or statements about an applicant’s legal rights. TMEP §§705.02, 709.06. See Hiring a U.S.-licensed trademark attorney for more information.
For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
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 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 response to this nonfinal Office action
Megan Aurand
/Megan Aurand/
Examining Attorney
Law Office 128
(571) 272-1614
megan.aurand@uspto.gov
RESPONSE GUIDANCE