Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

FINAL 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) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

 

Issue date:  March 12, 2020

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on 3/2/2020.

 

In a previous Office Action dated 10/1/2019, the trademark examining attorney refused registration of the applied-for mark based on a Specimen Refusal. In addition, applicant was required to satisfy Request-for-Information Requirement Regarding Specimen and Domicile and Attorney Requirements.

 

Based on applicant’s response, the trademark examining attorney notes that the Domicile and Attorney Requirements has been satisfied. See TMEP §§713.02, 714.04. 

 

However, no response has been provided to the Specimen Refusal or the Request-for-Information Requirement, and thus, these are maintained and now made FINAL, as discussed below.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

SUMMARY OF ISSUES MADE FINAL that applicant must address:

·         Specimen Refusal

·         Request-for-Information Requirement Regarding Specimen

 

SPECIMEN REFUSAL

 

Registration is refused because the specimen in International Class 20 appear to consist of digitally altered images or a mock-up of the intended depictions of the mark on the goods or their packaging for future use in commerce; however, these provisional samples do not show the applied-for mark in actual use in commerce.  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). 

 

A mock-up of a product or its packaging that has been digitally created or otherwise altered to include the mark does not show actual use of the mark in commerce.  See 15 U.S.C. §1127; TMEP §§904.04(a), 904.07(a); cf. In re Chica, Inc., 84 USPQ2d 1845, 1848 (TTAB 2007) (holding that “a mere drawing of the goods with an illustration of how the mark may be displayed” was not an acceptable specimen because it did not show actual use in commerce); In re The Signal Cos., 228 USPQ 956, 957-58 n.4 (TTAB 1986) (noting that a printer’s proof of an advertisement would not be an acceptable specimen because it does not show actual use in commerce).  In addition, a photograph of the mark on a label, tag, or piece of paper placed on top of applicant’s or a third party’s goods or packaging is generally not acceptable to show applicant’s use of the applied-for mark in commerce.  See 15 U.S.C. §1127; TMEP §§904.03(a), 904.07(a).  Applicant must show the mark on applicant’s own goods or packaging as it is seen by the purchasing public, with goods that have actually been sold or transported in commerce.  See TMEP §904.07(a).

 

In this case, the specimen images show products with the applied-for mark digitally placed over top of the product. There is visibly apparent difference in the pixilation immediately surrounding the applied-for mark compared to the rest of the image. Further, the applied-for mark appears in a straight line and in solid type face without conforming to the shape or texture of the goods in the image. Also, the lighting and shading of the surrounding environment is not reflected in the image of the applied-for mark as it is on other areas of the goods.

 

Further, previously attached evidence from Forensically supports this view of the specimens. Previously attached evidence first explains Forensically and the process by which it analyzes images and detects and shows areas of heavy editing and digital alteration of photograph files. The evidence from Forensically strongly supports a finding the applied-for mark in each photograph is a later digital addition to the images. The Forensically results shows heavy editing where the applied-for mark appears and around the edges of the goods, supporting the conclusion discussed above—that the goods themselves have been edited to be placed on a false background and that the applied-for mark has been digitally added to the image of the goods shown.

 

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 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).  “Use in commerce” means (1) a bona fide use of the applied-for mark in the ordinary course of trade (and not merely to reserve a right in the mark), (2) the mark is placed in any manner on the goods, packaging, tags or labels, or displays of the goods, and (3) the goods are actually sold or transported in commerce.  See 15 U.S.C. §1127.

 

In addition to the examples of specimens in (2) in the above paragraph, examples of specimens for goods also include instruction manuals, containers, and webpages that include a picture or textual description of the goods associated with the mark and the means to order the goods.  See TMEP §§904.03 et seq. 

 

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 goods 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 the Specimen webpage.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.  However, if applicant responds to the refusal, applicant must also respond to the requirements set forth below.

 

REQUEST-FOR-INFORMATION REQUIREMENT REGARDING SPECIMENS

 

A specimen must show the mark as used in commerce, which means use in the ordinary course of trade (not merely to reserve a right in the mark).  15 U.S.C. §§1051, 1052, 1127.  A specimen shows a mark used in commerce for goods only if it shows the mark placed on the goods, packaging, tags or labels affixed to the goods, or displays of the goods, and the goods are actually sold or transported for sale in commerce.  15 U.S.C. §1127.  Because the specimen of record appears to be digitally created or altered, or otherwise a mock-up, it does not appear to show the mark as actually used in commerce.  Therefore, to permit proper examination of the application, applicant must submit additional information for the record about the specimen and how the mark as shown in the specimen is in use in commerce with applicant’s goods.  See 37 C.F.R. §2.61(b); TMEP §814.

 

Accordingly, applicant must respond to the following questions and requests for documentation to satisfy this request for information:

 

(1)        Applicant must specifically state for the record whether it has used its proposed mark on the identified goods continuously in commerce regulated by the United States since the application filing date.

 

(2)        Applicant must specifically state for the record whether the goods shown by the specimen submission or submissions actually bear the proposed mark in the exact manner shown when sold in U.S. commerce.

 

(3)        Applicant must specifically state for the record whether any of the specimens were prepared for submission with this application.

 

(4)        If the goods shown in the specimen or specimens with the proposed mark are sold in physical stores, applicant must provide unedited digital images or photographs showing the goods bearing the proposed mark in store locations, the time and date taken, and the address of the store location.  If these goods are sold in another type of sales environment, applicant must provide evidence showing the goods for sale in that environment, and provide the address of any physical location.

 

(5)        If these goods are available for sale online, applicant must provide images of websites showing the goods for sale in direct association with the proposed mark, including the complete URL address of the website shown so that it can be accessed by the USPTO to permit proper and complete examination of this application.

 

(6)        If applicable, applicant must provide images of all sides of the packaging shown in the boxed specimen submission or submissions.

 

See 37 C.F.R. §2.61(b); TMEP §814. 

 

Failure to comply with a request for information is grounds for refusing registration.  In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.  Merely stating that information is available on applicant’s website is an insufficient response and will not make the relevant information of record.  See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).

 

ASSISTANCE

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06. 

 

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 request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).

 

 

/Kimberly M. Ray/

Examining Attorney

Law Office 122

(571) 272-7834

Kimberly.Ray@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on March 12, 2020 for

U.S. Trademark Application Serial No. 88513786

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Kimberly M. Ray/

Examining Attorney

Law Office 122

(571) 272-7834

Kimberly.Ray@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from March 12, 2020, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·         Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·         Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·         Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”