Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

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:  December 11, 2019

 

 

This is further to the November 12, 2019 response that refused the application based on:  a) attorney representation requirement; b) a specimen refusal; c) a requirement to clarify owner’s name; and d) a requirement to delete the voluntary disclaimer.

 

Applicant has responded satisfactorily to all outstanding issues, except the specimen refusal.

 

Applicant provides a response to the request to provide additional specimen evidence, but fails to provide additional specimens.

 

 

Requirement To Submit Additional Specimens

 

 

Pursuant to Section 904.01(a) of the Trademark Manual of Examining Procedure, if more than one item of goods, or more than one service, is specified in one class in an application, it is usually not necessary to have a specimen for each product or service.   When the range of items is wide or contains unrelated articles, the examining attorney may request additional specimen(s) under 37 C.F.R. §2.61(b).  The USPTO does not require specimens showing use of the mark for every item set forth in an application.  However, if an identification is so broad that it encompasses a wide range of products or services, the applicant may be required to submit evidence that it actually uses the mark on a wide range of products or services to obtain registration.  37 C.F.R. §2.61(b). See In re Air Products & Chemicals, Inc., 192 USPQ 84, recon. denied 192 USPQ 157 (TTAB 1976).  

 

 

 

 

For a closely related group, a specimen showing use of the mark on one item of the group is sufficient.  As the closeness of the relationship becomes less certain, specimens of use on more than one item might be necessary to show generalized use.  37 C.F.R. §2.61(b).  In this case, Class 16 refers to various goods, such as markers, sealing machines for offices, charge cards without magnetic coating, modelling paste; paper bags for packaging, table linen, among others, which are not necessarily related.  Yet the substitute specimen only shows one example of applicant’s product, namely, a drawing board or blackboard.  Thus, applicant must provide additional specimen evidence of how the mark is used as a source indicator for any of the other items.

 

 

 

If submitting a substitute specimen requires an amendment to the dates of use, applicant must verify the amended dates with an affidavit or signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.71(c); TMEP §904.05; see 37 C.F.R. §2.193(e)(1).

 

  

 

Submitting a substitute specimen:  Applicant may submit a substitute specimen that shows the applied-for mark used in commerce, and the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “The substitute specimen was in use in commerce at least as early as the filing date of the application.”  37 C.F.R. §2.59(a); TMEP §904.05; see 37 C.F.R. §2.193(e)(1).  If submitting a substitute specimen requires an amendment to the dates of use, applicant must also verify the amended dates.  37 C.F.R. §2.71(c); TMEP §904.05. 

 

 

 

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).  Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and webpages that show the mark used in the actual sale, rendering, or advertising of the services.  See TMEP §1301.04(a), (h)(iv)(C).  Specimens comprising advertising and promotional materials must show a direct association between the mark and the services.  TMEP §1301.04(f)(ii).

 

 

 

To submit a verified substitute specimen online using the Trademark Electronic Application System (TEAS), applicant should (1) answer “yes” to the TEAS response form wizard question to “submit a new or substitute specimen,” and then do the following for each relevant class for which a substitute specimen is being submitted:  (2) attach a jpg or pdf file of the substitute specimen, (3) describe what the specimen consists of, and (4) select the statement that “The substitute specimen(s) was in use in commerce at least as early as the filing date of the application.”

 

 

 

RESPONSE GUIDELINES FINAL OFFICE ACTION:

 

If applicant does not timely respond within six months of the issue date of this final Office action, the goods to which the final refusal(s) apply will be deleted from the application by Examiner’s Amendment.  37 C.F.R. §2.65(a); see 15 U.S.C. §1062(b).

 

In such case, the application will proceed for the following goods only:  drawing boards; blackboards. 

 

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 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).

 

 

/Giselle Agosto-Hincapie/

Examining Attorney Advisor

Trademarks Law Office 102

giselle.agosto@uspto.gov (Informal inquires only)

571-272-5868

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA 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 December 11, 2019 for

U.S. Trademark Application Serial No. 88547401

 

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. 

 

 

/Giselle Agosto-Hincapie/

Examining Attorney Advisor

Trademarks Law Office 102

giselle.agosto@uspto.gov (Informal inquires only)

571-272-5868

 

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 December 11, 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.”