To: | Draco Hygienic Products Inc. (tonyw@dnriplaw.com) |
Subject: | U.S. Trademark Application Serial No. 88533602 - EVERSOFT - UST2540A-DHP |
Sent: | March 12, 2020 10:45:21 AM |
Sent As: | ecom115@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88533602
Mark: EVERSOFT
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Correspondence Address: |
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Applicant: Draco Hygienic Products Inc.
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Reference/Docket No. UST2540A-DHP
Correspondence Email Address: |
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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
This Office action is in response to applicant’s communication filed on March 3, 2020.
The applicant (1) submitted a substitute specimen for the Class 3 goods; (2) amended the Class 3 identification of goods; and (3) added Class 5 to the application and provided a specimen therefor. No. (3) is acceptable. International Class 5 has been added to the application.
1. Sections 1 and 45 Specimen Refusal – International Class 3
Thus, the refusal to register the applied-for mark in International Class 3 is now made FINAL because applicant failed to provide evidence of use of the mark 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), 2.63(b); TMEP §§904, 904.07, 1301.04(g)(i).
As explained in greater detail in subsection 2 below, applicant amended the Class 3 identification to include goods that exceed the scope of the original identification in the application. Specifically, “hair shampoo, body wash, non-medicated skin care preparations, namely, creams, lotions, cleaners, gels” exceed the scope of the original identification in the application. The substitute specimen shows the use of the applied-for mark on body wash and hair shampoo. Thus, the substitute specimen does not show the use of the mark on or in conjunction with any of the Class 3 goods originally specified in the application.
Examples of specimens. Specimens for goods include a photograph of (1) the actual goods bearing the mark; (2) an actual container, packaging, tag or label for the goods bearing the mark; or (3) a point-of-sale display showing the mark directly associated with the goods. See 37 C.F.R. §2.56(b)(1), (c); TMEP §904.03(a)-(m). A webpage specimen submitted as a display associated with the goods must show the mark in association with a picture or textual description of the goods and include information necessary for ordering the goods. TMEP §904.03(i); see 37 C.F.R. §2.56(b)(1), (c).
Any webpage printout or screenshot submitted as a specimen, whether for goods or services, must include the webpage’s URL and the date it was accessed or printed. 37 C.F.R. §2.56(c).
Response options. Applicant may respond to this refusal by satisfying one of the following:
(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 and (b) shows the mark in actual use in commerce for the Class 3 goods identified in the application. 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) (which includes withdrawing an amendment to allege use, if one was filed), as no specimen is required before publication. This option will later necessitate additional fee(s) and filing requirements, including a specimen.
For an overview of the response options referenced above and instructions on how to satisfy these options using the online Trademark Electronic Application System (TEAS) form, see the Specimen webpage.
Refusal Applies Only to International Class 3
(1) Deleting the class to which the refusal pertains;
(2) Filing a Request to Divide Application form (form #3) to divide out the goods that have not been refused registration, so that the mark may proceed toward publication for opposition in the class to which the refusal does not pertain. See 37 C.F.R. §2.87. See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide). If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to all outstanding issues in this Office action, including the refusal. 37 C.F.R. §2.87(e).; or
(3) Amending the basis for that class, if appropriate. TMEP §806.03(h). (The basis cannot be changed for applications filed under Trademark Act Section 66(a). TMEP §1904.01(a).)
2. Class 3 Identification of Goods
In this case, the application originally identified the goods as follows: “Heavy-duty hand cleaning preparations, hand soap, cream-type hand cleaner, lotion-type skin cleaner.”
However, the proposed amendment identifies the following Class 3 goods: “Heavy-duty hand cleaning preparations, non-medicated hand soap; cream-type hand cleaner, non-medicated lotion-type skin cleaner, hair shampoo, body wash, non-medicated skin care preparations, namely, creams, lotions, cleaners, gels.”
The bolded portion of the proposed Class 3 amendment is beyond the scope of the original identification because the original identification contained only hand and skin cleaning preparations and soap; the proposed amended identification includes items not encompassed by the original identification, i.e., “hair shampoo, body wash, non-medicated skin care preparations, namely, creams, lotions, cleaners, gels.”
b. 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.
c. Applicant may adopt the following identification of goods in International Class 3, if accurate: Heavy-duty hand cleaning preparations, non-medicated hand soap; cream-type hand cleaner, non-medicated lotion-type skin cleaner. See TMEP §1402.01.
For the foregoing reason, the requirement that applicant amend the Class 3 identification of goods is maintained and made FINAL.
Partial Abandonment for Failure to Respond to this Final Office Action
In such case, the application will proceed for the following class only: International Class 5 in its entirety.
Applicant may respond to this final Office action by providing one or both of the following:
(1) A request for reconsideration that fully resolves all outstanding requirements and refusals; and/or
(2) An appeal to the Trademark Trial and Appeal Board with the required filing fees.
TMEP §715.01; see 37 C.F.R. §2.63(b)(1)-(2).
Responding to a Final Office Action
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).
If the applicant has any questions about this final Office action, please call the assigned examining attorney.
/Barbara A. Gaynor/
Barbara A. Gaynor
Trademark Examining Attorney
Law Office 115
571-272-9164
Barbara.Gaynor@uspto.gov
RESPONSE GUIDANCE