To: | SHENZHEN CREALITY 3D TECHNOLOGY CO.,LTD (trademarks@dililaw.com) |
Subject: | U.S. Trademark Application Serial No. 88541585 - CREALITY - DH |
Sent: | August 21, 2020 07:32:25 PM |
Sent As: | ecom111@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88541585
Mark: CREALITY
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Correspondence Address:
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Applicant: SHENZHEN CREALITY 3D TECHNOLOGY CO.,LTD
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Reference/Docket No. DH
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.
This Office action is in response to applicant’s communication filed on July 31, 2020.
In a previous Office action dated October 21, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following: Trademark Act Sections 1 and 45 for a failure to show the applied-for mark in use in commerce with any of the specified goods. In addition, applicant was required to satisfy the following requirements: provide information about the specimen, provide additional specimen submissions, and provide U.S. counsel information.
Applicant’s U.S. counsel information is acceptable and entered into the record.
Based on applicant’s response, the trademark examining attorney maintains and now makes FINAL the refusal and requirements in the summary of issues below. See 37 C.F.R. §2.63(b); TMEP §714.04.
SUMMARY OF ISSUES MADE FINAL that applicant must address:
SECTIONS 1 AND 45 REFUSAL – MARK NOT USED IN COMMERCE
Thus, the refusal to register the applied-for mark in International Class 017 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). In addition, the requirement for information/documentation about the original specimen and any substitute specimen is made final. 37 C.F.R. §2.61(b).
An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark as actually used in commerce for each international class of goods identified in the application. 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 altered to include the mark or a mockup of how the mark may be displayed on the product or packaging is not a proper specimen for goods because it does not show actual use of the mark in commerce. See 15 U.S.C. §1127; 37 C.F.R. §2.56(c); TMEP §904.04(a).
In this case, the specimen shows the mark appearing displayed on packaging in a manner uncommon for similar goods in U.S. commerce. Specifically, the packaging appears crudely assembled, and it comprises vague and incongruous information about the contents, whereby the actual colors of the goods are not listed (the packaging references “two color mixed printing filament”), and the material composition of the goods are indicated by a list of different materials and not distinguishing either the percentage of each material used or that the packaging contains different goods each comprising a different material (the packaging references “five new materials for manufacturing model: rubber, acrylonitrile, butadiene styrene, polyactic acid and thermoplastic”). Therefore, the specimen does not show actual use of the mark in commerce.
Additional information/documentation about specimen required. To permit proper examination of the application record for compliance with use in commerce requirements, applicant must respond to the following requests for information and documentation about the specimen(s). See 37 C.F.R. §2.61(b); TMEP §814. Answer for each specimen/photograph/image previously provided. For any website source submitted as supporting evidence, provide a digital copy of the entire webpage from top to bottom, as rendered in an Internet browser, that includes the URL and access or print date. TMEP §710.01(b) (citing In re I-Coat Co., 126 USPQ2d 1730, 1733 (TTAB 2018)).
(1) Identify the particular good(s) listed in the application for which the specimen(s) was submitted to show use of the mark.
(2) Explain whether the specimen was created for submission with this application. If so, specify the date each specimen was created. If applicant used the image(s) of the goods shown in the specimen(s) from a third-party website, provide the URL of the website and a digital copy of relevant webpage(s) for each image.
(3) Provide information about and examples of how applicant’s goods appear in the actual sales environment.
(a) If sold in stores, provide a representative sample of the name(s) of the stores and of photographs showing the goods for sale in the named stores, such as photographs of the sales displays or goods on shelves with the mark.
(b) If sold online, provide a representative sample of the name(s) of the online retailers, the website URL(s) for each named retailer, and a digital copy of the webpages showing the goods for sale on the named website.
(c) If sold in another type of sales environment (e.g., catalogs, trade shows), identify the environment and provide photographs and/or documentation showing the goods for sale in that environment.
(4) If the information in question (3) about how the goods appear in the actual sales environment is not available to applicant, please describe how applicant’s goods are sold or transported and provide photographs and other documentation showing how applicant’s mark appears on the goods and/or its packaging when the goods are sold or transported to or within the United States.
(5) For each category of sales environment specified in response to questions (3) and (4), specify when the goods bearing the mark were first available for purchase within the United States, the date of the first sale of the goods to or within the United States, and whether the goods are still for sale to or within the United States in that environment.
(6) For the goods identified in response to question (1), specify the dollar amount of sales with or within the United States and provide at least three invoices or other supporting documentation that show payments or other consideration made, redacting personal or private information of buyers as necessary.
Response options. Applicant may respond to the specimen refusal by satisfying one of the following for each applicable international class:
(1) Submit the additional information/documentation referenced above establishing that the original specimen was actually used in commerce as of the filing date of the application.
(2) 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 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. For instructions on how to submit a different specimen using the online Trademark Electronic Application System (TEAS) form, see the Specimen webpage.
Applicant must also fully respond to the requirement for additional information and documentation referenced above for any different specimen provided. Failure to comply with a requirement to furnish 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 or a third party website or providing a hyperlink of such a website is an insufficient response and will not make the additional information or materials of record. See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).
(3) Amend the filing basis to intent to use under Section 1(b), as no specimen is required before publication. This option will later necessitate additional fee(s) and filing requirements, including a specimen.
If applicant amends the basis, the requirement for additional information and documentation referenced above will be withdrawn.
REQUEST FOR ADDITIONAL SPECIMEN SUBMISSIONS
Applicant must submit additional specimens to allow for a complete and accurate examination of the application and assessment of the registrability of the subject mark, in accordance with Rule 2.61(b). 37 C.F.R. §§ 2.56(a), 2.61(b); see TMEP § 904.01(a); cf. Grand Canyon W. Ranch LLC v. Hualapai Tribe, 78 U.S.P.Q.2d 1696, 1698 (TTAB 2006) (“an applicant who bases its application on Section 1(a) (use in commerce) but who did not use the mark on some or all of the goods or services identified in the application may "cure" this problem by amending its basis to Section 1(b)”). The Trademark Act defines “commerce” as commerce that may be lawfully regulated by the U.S. Congress. See 15 U.S.C. § 1127. “Use in commerce” means (1) the bona fide use of a 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 at their point of sale, and (3) the goods are actually sold or transported in commerce. See 15 U.S.C. § 1127. Applicant must provide a full translation of any submitted material that is not in English. 37 C.F.R. § 2.61(b).
Please note that for every specimen submitted, Applicant must clearly provide the common commercial name for the goods to which such specimen relates in order to permit proper examination of the goods.
Applicant should submit specimens demonstrating use of the mark on all of the following goods:
1. Insulating materials;
2. Semi-worked ABS (acrylonitrile butadiene styrene) filaments for use in 3D printing;
3. Semi-worked ABS filaments for use in 3D printing;
4. Semi-worked PLA (polylactic acid) filaments for use in 3D printing;
5. Semi-worked PLA filaments for use in 3D printing;
6. Semi-worked thermoplastic filaments used for 3D printing;
7. Threads of rubber, not for use in textiles
If Applicant is unable to provide specimens to support use of these items, Applicant must delete these entries, or amend the filing basis for those goods that were not in proper use as of the application filing date to an intent to use basis under Section 1(b). This option will later necessitate additional fees and filing requirements such as providing a specimen for these goods at a subsequent date.
How to submit a verified specimen.
After opening the appropriate TEAS response form, answer “Yes” to form wizard question #2, click “Continue,” and provide the following for each relevant class for which a specimen is being submitted:
(1) Under the heading “Classification and Listing of Goods/Services/Collective Membership Organization,” check the box next to the following statement: “Check here to modify the current classification number; listing of goods/services/the nature of the collective membership organization; dates of use; and/or filing basis; or to submit a substitute specimen, a foreign registration certificate, or proof of renewal of a foreign registration. If not checked, the changes will be ignored.”;
(2) Attach specimen under “Specimen File” (attachment may not exceed 5 megabytes);
(3) Describe in the box below that location what the attached specimen consists of;
(4) Check the box below the specimen description next to the following statement (to ensure that the declaration language is inserted into the form): “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.”; and
(5) Follow the instructions within the form for signing. The form will require two signatures: one in the “Declaration Signature” section and one in the “Response Signature” section.
Failure to comply with a requirement to furnish additional specimens is grounds for refusing registration. In re Harley, 119 U.S.P.Q.2d 1755, 1757-58 (TTAB 2016); TMEP § 814. Merely stating that evidence is available on Applicant’s or a third party website or providing a hyperlink of such a website is an insufficient response and will not make the additional specimens of record. See In re Planalytics, Inc., 70 U.S.P.Q.2d 1453, 1457-58 (TTAB 2004).
ASSISTANCE
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).
/J. Ian Dible/
J. Ian Dible
Examining Attorney
Law Office 111
(571) 272-0209
ian.dible@uspto.gov
RESPONSE GUIDANCE