Priority Action

United States Patent and Trademark Office (USPTO)

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

 

 

 

PRIORITY ACTION

NONFINAL 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).  A link to the appropriate TEAS response form appears at the end of this Office action.

 

 

Issue date:  October 17, 2019

 

 

 

USPTO database searched; no conflicting marks found.  The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting marks that would bar registration under Trademark Act Section 2(d).  15 U.S.C. §1052(d); TMEP §704.02.

 

Applicant must address issues shown below.  On October 17, 2019, the examining attorney and the above applicant or attorney discussed the issues below.  Applicant must timely respond to these issues.  See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §708.05.

 

The assigned examining attorney has reviewed the referenced application and determined the following.

 

I.  SPECIMEN:

 

As discussed, registration is refused because the specimen does not show the applied-for mark in use in commerce.  That is, while the mark is displayed on the poster, one cannot tell what services are performed under the mark.  As such, another specimen is needed that references the applicant’s mark and in relation to the applicant’s live musical performance services (i.e., tour dates, describing the services, ticket purchase information, etc.).  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).

 

Consequently, applicant must submit another specimen showing the mark as used in commerce (i.e., a ‘substitute’ specimen).  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 acceptable specimens for services include signs, photographs, brochures, website printouts or advertisements that show the mark used in the sale or advertising of the services.  TMEP §§1301.04 et seq.

 

Applicant must ‘verify’ the authenticity of the substitute specimen by: (a) submitting it under the below statement, and (b) by supporting such statement via an (i) affidavit or a (ii) declaration (a sample of which is provided below) under 37 C.F.R. §§2.20 and 2.59(a); TMEP §904.05.

 

The statement supporting use of the substitute specimen must read as follows:

 

The substitute specimen was in use in commerce at least as early as the filing date of the application.

 

Please note: This statement, along with the below declaration, are already incorporated into the online Response to Office Action form.  They are, however, being provided herein solely for informational purposes and/or to the extent applicant submits a paper response.

 

DECLARATION:

 

The following is a properly worded declaration under 37 C.F.R. Section 2.20.  If the applicant uses this declaration rather than a notarized statement, then at the end of its response, the applicant should insert the following declaration signed by a person properly authorized to sign on behalf of the applicant.

 

The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. 1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that the facts set forth in this application are true; all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.

 

 

                        _____________________________                                  

                                          (Signature)

 

                        _____________________________

                         (Print or Type Name and Position)

 

                        _____________________________

                                              (Date)

 

 

-  ALTERNATIVE – Substituting a Basis (Advisory):

 

If the applicant cannot submit an acceptable substitute specimen at this time under the Section 1(a) basis, applicant may wish to amend the application to assert a Section 1(b) intent-to-use basis.  This amendment will delay the submission of an acceptable specimen until a later date, but will necessitate additional fee(s) and requirements.

 

Accordingly, if the applicant intends to amend the basis from Section 1(a) to Section 1(b), the applicant must submit the following statement (which is also provided online):

 

The applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application since the filing date of the application. 

 

Trademark Act Section 1(b), 15 U.S.C. Section 1051(b).

 

As above, this statement must also be verified with either an (i) affidavit or a (ii) declaration under 37 C.F.R. Section 2.20. Trademark Act Section 1(b), 15 U.S.C. Section 1051(b);  37 C.F.R. Section 2.71(d)(1).  Please see immediately above for a properly worded declaration.

 

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.

 

II.  CONCLUSION:

 

If the applicant has any questions or needs assistance in responding to this Office Action, please telephone the assigned examining attorney.

 

Please note, if the applicant needs representation by an attorney in responding to this Action due to its technical nature, the Patent and Trademark Office cannot aid in the selection process.  37 C.F.R. §2.11.

 

How to respond.  Click to file a response to this nonfinal Office action.  

 

 

/KaranChhina/

Karanendra S. Chhina

Trademark Attorney

Law Office 114

(571) 272-9447

karan.chhina@uspto.gov

 

 

RESPONSE GUIDELINES:  For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  For a requirement, applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

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.

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS 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 October 17, 2019 for

U.S. Trademark Application Serial No. 88524993

 

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. 

 

 

/KaranChhina/

Karanendra S. Chhina

Trademark Attorney

Law Office 114

(571) 272-9447

karan.chhina@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 October 17, 2019, 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.”