To: | SP IP, LLC (mlabauve@lip-law.com) |
Subject: | U.S. Trademark Application Serial No. 88509809 - SPEEDPRO GREAT. BIG. GRAPHICS. - N/A |
Sent: | September 27, 2019 02:53:10 PM |
Sent As: | ecom105@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88509809
Mark: SPEEDPRO GREAT. BIG. GRAPHICS.
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Correspondence Address: 1100 Peachtree Street, Suite 250
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Applicant: SP IP, LLC
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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 27, 2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
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).
SUMMARY OF ISSUES
The identification of services is indefinite and must be clarified because some of the services require clarification of the nature of the service activity as noted in the suggestions below and others could identify services in more than one class. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. The USPTO has the discretion to determine the degree of particularity needed to clearly identify goods and/or services covered by a mark. In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d 1593, 1597 (TTAB 2014) (citing In re Omega SA, 494 F.3d 1362, 1365, 83 USPQ2d 1541, 1543-44 (Fed. Cir. 2007)). Accordingly, the USPTO requires the description of goods and/or services in a U.S. application to be specific, definite, clear, accurate, and concise. TMEP §1402.01; see In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d at 1597-98; Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954).
Suggested Amendments
Suggested amendments appear below in bold, explanatory information appears in brackets and should is not part of the identification, and matter to be deleted, if any, is struck through. Please note that these suggestions are illustrative and not exhaustive. Applicant should refer to the Identification Manual referenced below for further guidance and suggestions of acceptable identifications.
Applicant may adopt the following identification, if accurate:
Class 035: Franchising services, namely, offering business management assistance in the establishment and operation of large format printing and design businesses; providing a website used to place orders for custom design of large format printable banners, event graphics, elevator wraps, directional signage, digital signage, decals, banners, window graphics, vehicle wraps, trade show exhibits and displays, brochures, leaflets, circulars, retail graphics architectural and glass finishes, backlit graphics, contour cut signage, boat graphics, elevator wraps, and murals
Class 040: Custom manufacture of signs, trade show exhibits and displays, architectural renderings and blueprints; custom printing
services; custom sign lettering; printing services, namely, printing of large format images from digital media {reworded for Class 040 clarity} imaging digital imaging services, custom manufacture of printed materials to the order and specification of others, namely, banners, event graphics, vehicle wraps, color coded
blueprints and schematics, brochures, leaflets, circulars, printed promotional materials on behalf of others; custom manufacture of {added to clarify nature of service activity}
retail graphics architectural and glass finishes, backlit graphics, contour cut signage, boat graphics, elevator wraps, and murals all to the order and specifications of others; custom imprinting of promotional products {to clarify nature of the service as indicate it is a service offered to others}
Class 041: Large format digital imaging services {this is interpreted as a Class 041 photography service per NICE classification system}
Class 042: Custom design services, namely, design of large format printable banners, event graphics, elevator wraps, directional signage,
digital signage, decals, banners, window graphics, vehicle wraps, trade show exhibits and displays, brochures, leaflets, circulars, retail graphics architectural and glass finishes, backlit graphics,
contour cut signage, boat graphics, elevator wraps, and murals; 3-D printing for others; providing a website that allows one-click ordering and {moved to Class 035} printing of the aforementioned goods
Advisory
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.
MULTIPLE-CLASS APPLICATION REQUIREMENTS
(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(s) 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 4 classes; however, applicant submitted a fee(s) sufficient for only 3 class(es). 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 acceptable for class(es) 035, 040, and 042; and applicant needs a specimen for class(es) 041. See more information about specimens.
Examples of specimens for goods include tags, labels, instruction manuals, containers, and photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale. 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.
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.
In this case, applicant must disclaim the wording “GREAT BIG GRAPHICS”. These unregistrable term(s) at best are merely descriptive of an ingredient, 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 from MacMillan Dictionary shows that GREAT is a laudatory word for very good or attractive, BIG means large in size, and GRAPHICS means the activity of designing pictures and text. Thus, the wording merely describes applicant’s services as involving the design and usage of pictures, images, and text for large scale items that are done well.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “GREAT BIG GRAPHICS” 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.
Failure to comply with a disclaimer requirement can result in a refusal to register the entire mark. TMEP §1213.01(b).
INFORMATION REGARDING COMMUNICATIONS WITH TRADEMARK OFFICE
Please call or email the assigned trademark examining attorney with questions about this Office action. Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action. See TMEP §§705.02, 709.06. Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
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
/Mark Shiner/
Mark Shiner
Trademark Examining Attorney
Law Office 105
571-272-1489
mark.shiner@uspto.gov
RESPONSE GUIDANCE