To: | HUI ZHAO (jmlawchina@gmail.com) |
Subject: | U.S. Trademark Application Serial No. 88529334 - MAOGOUBLUE - N/A |
Sent: | December 06, 2019 03:11:31 PM |
Sent As: | ecom105@uspto.gov |
Attachments: | Attachment - 1 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88529334
Mark: MAOGOUBLUE
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Correspondence Address: |
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Applicant: HUI ZHAO
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Reference/Docket No. N/A
Correspondence Email Address: |
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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: December 06, 2019
In a previous Examiner’s amendment dated November 19, 2019, the trademark examining attorney amended the application as follows:
(1) Provided translation of the wording MAOGOU in the mark
Upon further review of the application, it has been determined that an additional refusal and/requirement must issue because the applied-for mark does not match the specimen. The trademark examining attorney sincerely apologizes for any inconvenience that the subsequent refusal and/or requirement may cause the applicant.
Applicant must respond to the following new issues:
(1) MARK ON THE DRAWING AND SPECIMEN DIFFER
(2) EXPLANATION OF MARK’S SIGNIFICANCE REQUIRED
Applicant must respond to all issues raised in this Office action within six months from the date of this Office action to avoid abandonment of the application. 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §1104.10(a).
MARK ON THE DRAWING AND SPECIMEN DIFFER
Registration is refused because the specimen does not show the mark in the drawing in use in commerce in International Class 18, which is required in the application or amendment to allege use. 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). The mark appearing on the specimen and in the drawing must match; that is, the mark in the drawing “must be a substantially exact representation of the mark” on the specimen. See 37 C.F.R. §2.51(a)-(b); TMEP §807.12(a).
In this case, the specimen displays the mark as MAOGOUBIUE. However, the drawing displays the mark as MAOGOUBLUE. The mark on the specimen does not match the mark in the drawing because the wording BLUE appears in the drawing, but appears as BIUE in the specimen. Applicant has thus failed to provide the required evidence of use of the mark in commerce. See TMEP §807.12(a).
Applicant may respond to this refusal by satisfying one of the following:
(1) Submit a different specimen (a verified “substitute” specimen) for each applicable international class that (a) shows the mark in the drawing in actual use in commerce for the goods and/or services in the application or amendment to allege use, and (b) 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.
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).
(2) Submit a request to 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.
The USPTO will not accept an amended drawing submitted in response to this refusal because the changes would materially alter the drawing of the mark in the original application or as previously acceptably amended. See 37 C.F.R. §2.72(a)-(b); TMEP §807.14. Specifically, the wording BLUE has a specific connotation, as a color. However, the wording BIEU does not appear to have a meaning, and per the attached evidence from forebears, appears to be a surname. Accordingly, the difference in commercial impression of the BLUE and BIEU is material.
For more information about drawings and instructions on how to satisfy these response options online using the Trademark Electronic Application System (TEAS) form, see the Drawing webpage.
EXPLANATION OF MARK’S SIGNIFICANCE REQUIRED
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.
How to respond. Click to file a response to this nonfinal Office action.
Mark Peisecki
/Mark Peisecki/
Trademark Examining Attorney Law Office 105
(571) 270-5399
mark.peisecki@uspto.gov
RESPONSE GUIDANCE