To: | University Products, Inc. (dbasile@dwpm.com) |
Subject: | U.S. Trademark Application Serial No. 88499536 - UNIVERSITY PRODUCTS THINKING IN & - N/A |
Sent: | September 23, 2019 10:29:33 AM |
Sent As: | ecom101@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88499536
Mark: UNIVERSITY PRODUCTS THINKING IN &
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Correspondence Address: |
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Applicant: University Products, Inc.
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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 23, 2019
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.
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).
Advertising materials are generally not acceptable as specimens to show use in commerce for goods. See In re Kohr Bros., 121 USPQ2d 1793, 1794 (TTAB 2017) (quoting In re Quantum Foods, Inc., 94 USPQ2d 1375, 1379 (TTAB 2010)); TMEP §904.04(b), (c). Advertising materials may consist of the following: online advertising banners appearing on search engine result pages and in social media; advertising circulars and brochures; price lists; listings in trade directories; and business cards. See TMEP §904.04(b).
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 identified in the application. 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 goods include tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, and displays associated with the actual goods at their point of sale. See TMEP §§904.03 et seq. Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods. TMEP §904.03(i).
Applicant may respond to this refusal by satisfying one of the following:
(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 and (b) shows the mark in actual use in commerce for the goods identified in the application. 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 specimen(s) was/were in use in commerce at least as early as the filing date of the application.” 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 the Specimen webpage.
IDENTIFICATION OF GOODS AND SERVICES
“Stationery, namely, catalog cards, book cards and pockets, book, document, magazine and pamphlet cartons, cases, covers and storage boxes, notepads and tissue paper; book binding and repairing materials; dictionaries; easels; blank, business and printed forms; paper display boxes; sign making kits comprised primarily of cardboard, paper, vinyl letters and pens; printed paper signs; pens and pencils; staplers; pencil sharpeners; paper cutters for office use; archival storage pages; document holders; corrugated record storage boxes; file boxes for storage of magazines, business and personal records; boxes, cartons and storage containers made of paper or cardboard; binders; folders; protective covers for sheets of paper and pages of books and the like; envelopes; adhesive tapes for stationery or household purposes; albums for memorabilia and photographs; mounting boards; buffered bond paper,” in class 16;
“Wholesale distributorship, mail order and telephone ordering services in the fields of equipment and supplies for books, book maintenance and storage, librarys, sign making, display boards, audio-visual apparatus, microfiche and microfilm storage, offices, computer apparatus, office and library furniture, and archival needs,” in class 35.
ONLINE ID MANUAL
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.
In this case, applicant must disclaim “PRODUCTS” and “SINCE 1968” because they are not inherently distinctive. These unregistrable terms at best are merely descriptive of a quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services. See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a).
The attached evidence consisting of prior registrations owned by the applicant shows “PRODUCTS” is disclaimed for the same goods and services. “SINCE 1968” merely describes when the applicant first started business. Thus, the wording merely describes applicant’s goods and/or services because “products” is generic and “since 1968” merely descriptive or informational.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “PRODUCTS” and “SINCE 1968” apart from the mark as shown.
For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
Therefore, applicant must submit a new drawing showing a clear depiction of the mark. All lines must be clean, sharp and solid, and not fine or crowded. 37 C.F.R. §§2.53(c), 2.54(e); TMEP §§807.05(c), 807.06(a). Additionally, the USPTO will not accept a new drawing in which there are amendments or changes that would materially alter the applied-for mark. 37 C.F.R. §2.72; see TMEP §§807.13 et seq., 807.14 et seq.
For more information about drawings and instructions on how to submit a drawing, see the Drawing webpage.
VERIFICATION OF SUBSTITUTE SPECIMEN
To submit a verified specimen or verified substitute specimen online using the Trademark Electronic Application System (TEAS) response form, (1) answer “Yes” to form wizard question #2; and then, continuing on to the next portion of the form, under the heading “Classification and Listing of Goods/Services/Collective Membership Organization,” do the following for each relevant class for which a specimen is being submitted: (2) check the box next to the following statement: “Check here to modify the current classification number; listing of goods/services/the nature of the collective membership organization; dates of use; and/or filing basis; or to submit a substitute specimen, a foreign registration certificate, or proof of renewal of a foreign registration. If not checked, the changes will be ignored.”; (3) under “Specimen File,” attach a specimen (attachment may not exceed 5 megabytes); (4) describe in the box below where you attached the file what the specimen consists of; and (5) check the box next to the following statement below the specimen description (to ensure that the declaration language is inserted into the form): “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” [for an application based on Section 1(a), Use in Commerce] OR “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use” [for an application based on Section 1(b) Intent-to-Use]. Additionally, when submitting a verified specimen, the TEAS online form requires two signatures: one in the “Declaration Signature” section and one in the “Response Signature” section.
How to respond. Click to file a response to this nonfinal Office action
/Ira Goodsaid/
Ira Goodsaid
Trademark Examining Attorney
Law Office 101
571-272-9166
ira.goodsaid@uspto.gov
RESPONSE GUIDANCE