To: | Association of National Advertisers, Inc ETC. (dcohen@reedsmith.com) |
Subject: | U.S. Trademark Application Serial No. 88495071 - #SEEHERHEARHER - 501777.20038 |
Sent: | September 19, 2019 02:53:58 PM |
Sent As: | ecom117@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88495071
Mark: #SEEHERHEARHER
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Correspondence Address:
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Applicant: Association of National Advertisers, Inc ETC.
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Reference/Docket No. 501777.20038
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 19, 2019
The referenced application and amendment to allege use have been reviewed by the assigned trademark examining attorney. The amendment to allege use satisfies the minimum filing requirements under 37 C.F.R. §2.76(c) however, it does not satisfy all statutory requirements. See TMEP 1104.10. Therefore, applicant must respond timely and completely to the issues below related to the amendment to allege use. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03, 1104.10(a).
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).
TRADEMARK ACT SECTIONS 1, 2, 3, & 45 REFUSAL – FAILURE TO FUNCTION
THIS PARTIAL REFUSAL APPLIES TO CLASS 45 ONLY
Registration is refused because the applied-for mark, as used on the specimen of record, is used merely as a hashtag for online social media and does not function as a trademark or service mark to indicate the source of applicant’s services and to identify and distinguish them from others. Trademark Act Sections 1, 2, 3, and 45, 15 U.S.C. §§1051-1053, 1127; see TMEP §§1202, 1202.18; cf. In re Hotels.com, L.P., 573 F.3d 1300, 1301, 1304, 91 USPQ2d 1532, 1533, 1535 (Fed. Cir. 2009) (holding that the addition of a top-level-domain to an otherwise unregistrable mark does not typically add any source-identifying significance).
A “hashtag” consists of a word or phrase preceded by the hash symbol or pound sign “#” (e.g., #chicago, #sewing, and #supremecourtdecisions) or by the term “hashtag” (e.g., hashtag skater). TMEP §1202.18. Hashtags are used on social-networking sites to identify or search for a keyword or topic of interest. Id.
In the present case, the specimen shows the applied-for mark used only as a hashtag in that it only appears in small lettering below other wording or after main wording showing that it is simply identifying keywords on social-networking sites.
Therefore, the mark consists only of wording coupled with the hash symbol (#) or term “hashtag,” and, as used on the specimen of record, would be perceived merely as a hashtag for searching online social media, and not as a trademark or service mark for particular goods and/or services.
REGISTRATION REFUSAL – UNACCEPTABLE SPECIMEN
THIS PARTIAL REFUSAL APPLIES TO CLASS 45 ONLY
Registration is refused because the specimen does not show the applied-for mark in use in commerce in International Class 45. 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 shows the mark in connection with the social networking services of Twitter® and Facebook® and therefore does not show that the applicant is providing social networking services for others, rather that the applicant is making use of the social networking services of others. Merely using the social networking services of others does not show the use of social networking services by the applicant for the applicant’s users.
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.
Partial Abandonment Advisory
If applicant does not respond to this Office action within the six-month period for response, International Class 45 will be deleted from the application. The application will then proceed with International Classes 35 and 41 only. See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).
If the applicant has any questions or requires assistance in responding to this Office Action, please contact the assigned examining attorney.
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 response to this nonfinal Office action
/Stephanie Rydland/
Stephanie Rydland
Examining Attorney
Law Office 117
(571) 272-7226
Stephanie.Rydland@uspto.gov
RESPONSE GUIDANCE