To: | Joseph, Steven (stajo@me.com) |
Subject: | U.S. Trademark Application Serial No. 88494798 - CRANKATSURIS - N/A |
Sent: | February 19, 2020 09:08:35 PM |
Sent As: | ecom121@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88494798
Mark: CRANKATSURIS
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Correspondence Address:
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Applicant: Joseph, Steven
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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: February 19, 2020
THIS IS A NON-FINAL ACTION.
This Office action is in response to applicant’s communication filed on January 20, 2020.
In a previous Office action dated September 24, 2019, the trademark examining attorney issued the following refusals and/or requirements based on the following:
Upon further review of the application, it was determined that the refusal must be CONTINUED and MAINTAINED and the following additional requirement must issue for the reason stated below. See TMEP §713.02.
SUMMARY OF ISSUES that applicant must address:
Because of the legal technicalities and strict deadlines of the trademark application process, applicant is encouraged to hire a private attorney who specializes in trademark matters to assist in this 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.
I. SECTIONS 1 AND 45 REFUSAL – SPECIMEN
APPLICANT SHOULD NOTE THAT THE IDENTIFICATION AMENDMENT PROPOSED IN THE RESPONSE HAS BEEN REVERTED FOR THE REASONS SET FORTH IN SECTION II BELOW.
When determining whether a mark is used in connection with the services in the application, a key consideration is the perception of the user. In re JobDiva, Inc., 843 F.3d 936, 942, 121 USPQ2d 1122, 1126 (Fed. Cir. 2016) (citing Lens.com, Inc. v. 1-800 Contacts, Inc., 686 F.3d 1376, 1381-82, 103 USPQ2d 1672, 1676 (Fed Cir. 2012)). A specimen must show the mark used in a way that would create in the minds of potential consumers a sufficient nexus or direct association between the mark and the services being offered. See 37 C.F.R. §2.56(b)(2); In re Universal Oil Prods. Co., 476 F.2d 653, 655, 177 USPQ2d 456, 457 (C.C.P.A. 1973); TMEP §1301.04(f)(ii).
To show a direct association, specimens consisting of advertising or promotional materials must (1) explicitly reference the services and (2) show the mark used to identify the services and their source. In re The Cardio Grp., LLC, 2019 USPQ2d 227232, at *2 (TTAB 2019) (quoting In re WAY Media, LLC, 118 USPQ2d 1697, 1698 (TTAB 2016)); TMEP §1301.04(f)(ii). Although the exact nature of the services does not need to be specified in the specimen, there must be something which creates in the mind of the purchaser an association between the mark and the services. In re Adair, 45 USPQ2d 1211, 1215 (TTAB 1997) (quoting In re Johnson Controls Inc., 33 USPQ2d 1318, 1320 (TTAB 1994)).
To show a direct association, specimens showing the mark used in rendering the identified services need not explicitly refer to those services, but “there must be something which creates in the mind of the purchaser an association between the mark and the service activity.” In re The Cardio Grp., LLC, 2019 USPQ2d 227232, at *1 (TTAB 2019) (citing In re WAY Media, LLC, 118 USPQ2d 1697, 1698 (TTAB 2016)).
In the present case, the specimen does not show a direct association between the mark and services in that the applicant’s specimen of record appears to consist of the title of an electronic book and concept within the book rather than “providing a website featuring blogs and non-downloadable publications” which are specific to articles in the fields of family and couples relationships. Accordingly, the applicant’s specimen of record fails to show use with any of the identified services and registration must be refused pursuant to Sections 1 and 45 of the Trademark Act.
Examples of specimens. 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). 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 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) (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 should note the requirement stated below.
II. IDENTIFICATION OF SERVICES
In this case, the application originally identified the services as follows: “Providing a website featuring blogs and non-downloadable publications in the nature of articles in the field(s) of family and couples relationships.”
However, the proposed amendment identifies the following services: “Providing a website featuring blogs and non-downloadable publications in the nature of articles in the field(s) of family and couples relationships. Commerce driven from blog site visits. Also, Publication: The CrankaTsuris Method: A Grown-up Guide to Effective Crankiness The Last Surviving Dinosaur: The TyrantoCrankaTsuris”.
This proposed amendment is beyond the scope of the original identification because the additional wording “Commerce driven from blog site visits. Also, Publication: The CrankaTsuris Method: A Grown-up Guide to Effective Crankiness The Last Surviving Dinosaur: The TyrantoCrankaTsuris” indicates that the applicant is also providing a publication in addition to the previously identified provision of a website featuring blogs and articles. The provision of publications are distinct from the originally identified services, as is the provision of goods in the nature of publications and thus is not encompassed by the original application. As such, the request to change the identification of record has been denied and the identification has been reverted to the original form.
For assistance with identifying and classifying 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 response guidelines stated below.
III. RESPONSE GUIDELINES
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.
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are 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.
/Amer Raja/
Amer Raja
Examining Attorney
Law Office 121
(571) 270 5936
amer.raja@uspto.gov
RESPONSE GUIDANCE