To: | Naver Corporation (trademarks@rutan.com) |
Subject: | U.S. Trademark Application Serial No. 88490746 - WEBTOON - 035403.0005T |
Sent: | February 06, 2020 11:46:41 AM |
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. 88490746
Mark: WEBTOON
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Correspondence Address: |
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Applicant: Naver Corporation
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Reference/Docket No. 035403.0005T
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 06, 2020
This Office action is in response to applicant’s communication filed on January 28, 2020. The following requirements have been satisfied: amended description of the mark, disclaimer statement, amended identification of goods in Class 09 (Classes 38 and 41 were previously accepted). TMEP §§713.02, 714.04.
Applicant’s specimen arguments regarding Class 38 services have been considered but is not persuasive. Therefore, the specimen refusal regarding Class 38 services is now maintained and the requirement of a substitute specimen or amendment to section 1(b) is made FINAL. See37 C.F.R. §2.64(a).
Final Specimen Refusal—Does Not Show Mark with Specific Services in Class 38
The applicant was required to submit a substitute specimen or amend to section 1(b).
In the response of January 18, 2020, the applicant did not submit a substitute specimen and argues that it “provides all of the class 38 services itself, without out the aid of a third party provider or platform, directly via its online website and downloadable software application. Applicant respectfully submits that no additional specimen is required.”
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 and/or 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 finally 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 and/or 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.
Abandonment of Services Advisory
In such case, the application will proceed for the goods and services in Classes 09 and 41.
See links below on how to properly respond to a final action.
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).
/William T. Verhosek/
William T. Verhosek
Trademark Examining Attorney
USPTO/Law Office 114
571-272-9464
william.verhosek@uspto.gov
RESPONSE GUIDANCE