To: | ROWPAR PHARMACEUTICALS, INC. (matt@bycerlaw.com) |
Subject: | U.S. Trademark Application Serial No. 88541180 - CLOSYS - 5073-TM-87 |
Sent: | October 21, 2019 01:28:57 PM |
Sent As: | ecom128@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88541180
Mark: CLOSYS
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Correspondence Address: |
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Applicant: ROWPAR PHARMACEUTICALS, INC.
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Reference/Docket No. 5073-TM-87
Correspondence Email Address: |
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COMBINED EXAMINER’S AMENDMENT/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 21, 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 18, 2019, the examining attorney and Matthew L. Bycer, attorney of record, 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.
Specimen Refusal
Registration is refused because the specimen in International Class 5 appears to consist of a digitally altered image or a mock-up of the mark on the goods or their packaging and does 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).
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 affixed to the goods, or displays that directly associate the mark with the goods and have a point-of-sale nature, and (3) the goods are actually sold or transported in commerce. See 15 U.S.C. §1127.
An image of a product or 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 this case, applicant’s specimen of record does not show “CLOSYS” in use in commerce in International Class 5. Specifically, the product and packaging appears digitally created to include the applied-for mark, and there are no shadows behind the goods. Therefore, the submitted specimen does not show the applied-for mark in use in commerce in International Class 5 and thus cannot be accepted.
Step-by-Step Instructions For Submitting a Substitute SpecimeN
To submit a verified substitute specimen online using the Trademark Electronic Application System (TEAS) response form, applicant should:
(1) Answer “Yes” to form wizard question #2; and then, continuing on to the next portion of the form, do the following for each relevant class for which a substitute specimen is being submitted;
(2) Under “Classification and Listing of Goods/Services/Collective Membership Organization,” select the following statement, “Check here to modify the current classification number; listing of goods/services; dates of use; and/or filing basis; or to submit a substitute specimen or foreign registration certificate. If not checked, the changes will be ignored.”;
(3) Under “Specimen File,” attach a specimen (attachment may not exceed 5 megabytes);
(4) Describe what the specimen consists of; and
(5) Select the following statement: “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”
Note: When submitting a verified substitute specimen, the TEAS online response form requires TWO signatures: one in the “Declaration Signature” section and one in the “Response Signature” section.
Application has been amended as shown below. As agreed to by the individual identified in the Priority Action section, the examining attorney has amended the application as shown below. Please notify the examining attorney immediately of any objections. TMEP §707. In addition, applicant is advised that amendments to the goods are permitted only if they clarify or limit them; amendments that add to or broaden the scope of the goods are not permitted. 37 C.F.R. §2.71(a).
Identification of Goods Amended
The identification of goods is amended to read as follows:
Class 5: MEDICATED DENTAL RINSE; MEDICATED TOOTHPASTE; MEDICATED DENTAL RINSES FOR SENIORS
See TMEP §§1402.01, 1402.01(e).
Mark Description AMENDED
The following description of the mark replaces the current description of record:
The mark consists of the letters “CLO” in blue with a blue horizontal bar over the letter “O”, and the letters “SYS” in green.
See 37 C.F.R. §§2.37, 2.72; TMEP §§808 et seq.
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.
/Olivia S. Lee/
Olivia S. Lee
Trademark Examining Attorney
Law Office 128
olivia.lee@uspto.gov
(571) 272-6848
RESPONSE GUIDANCE