To: | BONGIOVI ACOUSTICS, LLC (dsteinman@kelrun.com) |
Subject: | U.S. Trademark Application Serial No. 88572090 - B - N/A |
Sent: | November 07, 2019 11:50:30 AM |
Sent As: | ecom122@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88572090
Mark: B
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Correspondence Address: KELL, ALTERMAN & RUNSTEIN, L.L.P.
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Applicant: BONGIOVI ACOUSTICS, LLC
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Reference/Docket No. N/A
Correspondence Email Address: |
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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: November 07, 2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
Search Results
The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
SUMMARY OF ISSUES that applicant must address:
REQUIREMENT – SPECIMEN DOES NOT SHOW USE WITH IDENTIFIED GOODS
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. 15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).
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).
Applicant may respond to this refusal by satisfying one of the following for each applicable international class:
(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 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), for which no specimen is required. This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.
For an overview of both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/specimen.jsp.
REQUIREMENT – AMEND MARK DESCRIPTION AND COLOR CLAIM
Applicant must clarify whether color is being claimed as a feature of the mark. See 37 C.F.R. §§2.37, 2.52(b)(1), 2.61(b); TMEP §§807.07(a) et seq. The drawing shows the mark in particular colors; however, the color claim and description of the mark indicate that the colors can vary or change such that the mark may be used in color combinations different from those shown on the drawing.
An applicant may seek registration of only one mark in a single application. 37 C.F.R. §2.52; TMEP §807.01; see 15 U.S.C. §1051; In re Int’l Flavors & Fragrances Inc., 183 F.3d 1361, 1366, 51 USPQ2d 1513, 1516-17 (Fed. Cir. 1999); In re Hayes, 62 USPQ2d 1443, 1445-46 (TTAB 2002). A mark with a changeable or “phantom” element such as varying or changing colors is generally considered to be more than one mark. See In re Hayes, 62 USPQ2d at 1445. In addition to the requirement to select one mark, the colors in the drawing of the mark, color claim, and description must match. See 37 C.F.R. §2.52(b)(1); TMEP §§807.07 et seq.
Applicant may clarify whether color is a feature of the mark by satisfying one of the following:
(1) If applicant is not limiting the application to particular colors, applicant must submit a (a) new drawing of the mark in black and white only, with no other colors, (b) statement authorizing deletion of any color claim, if appropriate, and (c) description of the literal and design elements in the mark that omits any reference to color. A registration for a mark with a black-and-white drawing covers depictions of the mark in all possible color combinations and is not limited to any particular color scheme. See In re Data Packaging Corp., 453 F.2d 1300, 1302, 172 USPQ 396, 397 (C.C.P.A. 1972); TMEP §807.14(e)(i). In this case, amending the mark to delete color would not be considered a material alteration; however, any other amendments to the drawing will not be accepted if they would materially alter the mark. 37 C.F.R. §2.72; see TMEP §§807.07(c), 807.14 et seq.
The following description is suggested, if accurate:
The mark consists of a stylized capitol letter “B” made up of vertical bands of varying heights.
(2) If applicant is limiting the application to particular colors, applicant must submit a (a) new drawing showing the mark in the specific colors for which registration is sought, or confirm that the original drawing shows the mark for which registration is sought, (b) an amended color claim and description of the mark that deletes the reference changeable or varying colors and restricts the color claim and description to only those colors in the new or original drawing, as appropriate. Generic color names must be used to describe the colors in the mark, e.g., red, yellow, blue. TMEP §807.07(a)(i)-(ii). If black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark, applicant must so specify in the description. See TMEP §807.07(d).
The following color claim and description are suggested, if accurate:
Color claim: “The colors dark blue, medium blue, medium-light blue, and light blue are claimed as a feature of the mark.”
Description: “The mark consists of a stylized capitol letter “B” made up of vertical bands of varying heights in shades of dark blue, medium blue, medium-light blue, and light blue.”
See TMEP §807.07(a)(i)-(ii).
For more information about drawings and instructions on how to submit a color claim and/or description online using the Trademark Electronic Application System (TEAS) form, see the Drawing webpage.
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.
Assistance
How to respond. Click to file a response to this nonfinal Office action
/Joan M. Blazich/
Joan M. Blazich
Trademark Examining Attorney
Law Office 122
(571) 272-7810
joan.blazich@uspto.gov
RESPONSE GUIDANCE