To: | The Hive Strategic Marketing Inc. (trademark@fitcheven.com) |
Subject: | U.S. Trademark Application Serial No. 88500038 - VALUABLE ENCOUNTERS - 7272-147258 |
Sent: | September 28, 2019 08:35:18 AM |
Sent As: | ecom112@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88500038
Mark: VALUABLE ENCOUNTERS
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Correspondence Address: |
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Applicant: The Hive Strategic Marketing Inc.
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Reference/Docket No. 7272-147258
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 28, 2019
OPEN APPLICATION ISSUES THAT MUST BE ADDRESSED IN RESPONSE TO OFFICE ACTION:
The following are the open application issues that the applicant must address in order to have a complete response to this Office action:
-Refusal to Register Under Trademark Act Section 1(a) –Requirement for Submission of an Acceptable Specimen of Use Unmet
-Requirement for Submission of a Certified Copy of Foreign Registration
-Requirement for Clarification and Proper Classification of Identification Language
-Requirement for Submission of Additional Fees or Restriction of Identification Language
SEARCH
REFUSAL to Register Under Trademark Act Section 1(a) –Requirement for Submission of an Acceptable Specimen of Use Unmet
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). A service mark is used in commerce “when it is used or displayed in the sale or advertising of services.” See 15 U.S.C. § 1127; 37 C.F.R. §2.56(b)(2).
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 at 942, 121 USPQ2d at 1126 (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. In re Universal Oil Prods. Co., 476 F.2d at 655, 177 USPQ2d at 457; TMEP §1301.04(f)(ii); see also In re JobDiva, Inc., 843 F.3d at 942, 121 USPQ2d at 1126; In re Adver. & Mktg. Dev., Inc., 821 F.2d at 620, 2 USPQ2d at 2014.
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 WAY Media, Inc., 118 USPQ2d at 1698 (quoting In re Osmotica Holdings, Corp., 95 USPQ2d 1666, 1668 (TTAB 2010)); 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)).
In the present case, the specimen does not show a direct association between the mark and services in that the mark is not used in association with any of the identified services. The specimen of use documentation of record is described by the applicant as an “advertisement.” The specimen documentation consists of twenty-one (21) pages wherein the mark sought in this application appears only twice –once by itself with no other wording on page 4 and once as part of a sentence [“The hive is a creative solutions company delivering valuable encounters.”]. Neither page shows the mark in use in association with any reference to any type of discernible services, thus both fail to show use of the mark in commerce for the services of record for this application.
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 the response options above and instructions on how to satisfy them using the Trademark Electronic Application System (TEAS) response form, see the Specimen webpage.
REQUIREMENT for Submission of a Certified Copy of Foreign Registration
An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin. 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016. In addition, an applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law. 15 U.S.C. §1126(b); TMEP §§1002.01, 1004.
Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available. TMEP §1003.04(a). A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin. TMEP §1004.01. If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin. TMEP §1016. In addition, applicant must also provide an English translation if the foreign registration is not written in English. 37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b). The translation should be signed by the translator. TMEP §1004.01(b).
If the foreign registration has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English translation, as appropriate), applicant should so inform the trademark examining attorney and request that the U.S. application be suspended until a copy of the foreign registration is available. TMEP §§716.02(b), 1003.04(b).
If applicant cannot satisfy the requirements of a Section 44(e) basis, applicant may request that the mark be approved for publication based solely on the Section 1(a) basis. See 15 U.S.C. §§1051(a), 1126(e); 37 C.F.R. §2.35(b)(1); TMEP §§806.02(f), 806.04(b), 1003.04(b). Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration. See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.04(b).
REQUIREMENT for Clarification and Proper Classification of Identification Language
“Advertising and promotion of the wares and services of others namely, conceiving, preparing, directing, and carrying out marketing promotions for others and conceiving, preparing, directing and carrying out advertising campaigns for others namely, conceiving, preparing, directing and carrying out events, meetings, and travel for others, advertising and promotion of wares and services of others, namely, mailings and printed matter for direct mail, print advertising, and outdoor media, dissemination on the internet, production of advertising messages for radio, television and the internet, copywriting, art direction, concept generation, plan development, marketing and strategic consultation, creating and selecting brand names and logos, event planning and execution, sports and entertainment programs, development and execution of promotion contests, winner fulfillment, arranging celebrity and entertainment appearances, design and execution of mobile marketing teams, disseminating samples, arranging interactive brand experiences, point of sale design and execution, preparing and executing sales incentive, reward and recognition programs, preparing and executing sales meetings and conferences, preparing and executing programming to motivate and educate sales staff, distributors, wholesalers, retailers and consumers, media planning consultation, consumer and sales data collection and management, and strategic oversight thereof.” See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The applicant may clarify by substituting some or all of the following suggested amended wording, if accurate:
International Class 035
Advertising and promotion of the wares and services of others namely, conceiving, preparing, directing, and carrying out marketing promotions for others; Developing promotional campaigns for business, namely, conceiving, preparing, directing and carrying out advertising campaigns for others; Organization, planning and conducting of exhibitions, meetings and events for commercial or advertising purposes; Providing travel business management services for others in the field of corporate travel to exhibitions, meetings and events for commercial or advertising purposes; Advertising and promoting the goods and services of others, namely, direct mail advertising services, print media advertising, and outdoor media advertising and advertising on the internet for others; Radio advertising in the nature of the production of advertising messages for radio; Television advertising; Dissemination of advertising of others via the Internet; Copy writing for advertising and promotional purposes; Advertising art direction; Design of advertising materials for others, namely, advertisement concept generation, plan development, marketing and strategic consultation; Brand concept and brand development services namely, creating and selecting brand names and logos for corporate and individual clients; Special event planning for business purposes; Arranging and conducting special events for business purposes; Arranging and conducting marketing promotional events for others; Promoting the goods and services of others by arranging for sponsors to affiliate their goods and services with sports competitions; Promoting the sale of goods and services of others by development and execution of promotion contests; Online advertising and mobile marketing services in the field of {specify field or type of goods/services, e.g., dentistry, dental equipment} via wireless networks for display on mobile devices; Disseminating samples, namely, distribution of samples for publicity purposes; Advertising services, namely, promoting the brands of other by arranging interactive brand experiences; Promoting the sale of goods and services of others by means of contests and incentive reward and recognition programs; Arranging and conducting business sales conferences and business sales meetings; Providing consulting services in the field of facilitating the planning, buying, and selling of media; Business information management services, namely, strategic oversight in the collection of consumer and business sales data.
International Class 039
Travel planning for individuals, families, and groups attending commercial exhibitions, meetings and events; Provision of travel information for attendees of commercial meetings and events; Booking of seats for travel for attendees of commercial meetings and events; Booking of tickets for air travel for attendees of commercial meetings and events.
International Class 041
Special event planning for social entertainment purposes; Arranging and conducting special events for social entertainment purposes; Entertainment services in the nature of arranging social entertainment events; Entertainment services, namely, personal appearances by a {specify, e.g., celebrity, musical band, movie star, sports celebrity}; Educational services, namely, providing motivational and educational speakers in the field of self- and personal improvement for business sales staff, distributors, wholesalers, retailers and consumers.
International Class 042
Packaging design; Design of point of sale {specify what is being designed, e.g., terminals for making contactless payments, electronic point-of-sale systems}.
Please note that parentheses are not acceptable in the identification. See TMEP Section 1402.12. Where the wording “{specify …}” appears in this Office Action, the examining attorney has merely suggested ways to cure the indefiniteness of the identification. The applicant must list the services without parentheses.
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.
REQUIREMENT for Submission of Additional Class Fee or Restriction of Identification Language
Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class.
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).
(2) Submit a filing fee for each international class not covered by the fee already paid (view the USPTO’s current fee schedule). Specifically, the application identifies goods and/or services based on use in commerce that are classified in at least four (4) classes; however, applicant submitted a fee sufficient for only one (1) class. Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.
(3) Submit verified dates of first use of the mark anywhere and in commerce for each international class. See more information about verified dates of use.
(4) Submit a specimen for each international class. The current specimen is not acceptable for any international class. See more information about specimens.
Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and website printouts that show the mark used in the actual sale, rendering, or advertising of the services.
(5) Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.” See more information about verification.
See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
ADVISORY –Response Guidelines for TEAS-Plus Applications
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
/Amy Kean/
Trademark Attorney, Law Office 112
Phone: 571-272-8854
Amy.Kean@uspto.gov
RESPONSE GUIDANCE