To: | KatanaCraft LLC (DocketLA@fulpat.com) |
Subject: | U.S. Trademark Application Serial No. 88572924 - KATANACRAFT - KATAN-98795 |
Sent: | October 25, 2019 09:14:42 AM |
Sent As: | ecom108@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88572924
Mark: KATANACRAFT
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Correspondence Address: |
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Applicant: KatanaCraft LLC
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Reference/Docket No. KATAN-98795
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: October 25, 2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
Search Results
Potential Section 2(d) Likelihood of Confusion Refusal
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
Refusal – Mark Differs on Drawing and Specimen
Note: If in response to the instant Office action, applicant amends the mark description of record to remove a reference to the “black band” and to specify that the rectangular background is not being claimed as a feature of the applied-for mark, then the instant refusal may be obviated. [See suggested amendment of mark description set forth below].
Registration is refused because the specimen does not show the mark in the drawing in use in commerce in International Class 40, which is required in the application or amendment to allege use. 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), 1301.04(g)(i). The mark appearing on the specimen and in the drawing must match; that is, the mark in the drawing “must be a substantially exact representation of the mark” on the specimen. See 37 C.F.R. §2.51(a)-(b); TMEP §807.12(a).
In this case, the specimen displays the mark as KATANACRAFT (stylized plus design) without a clearly defined rectangular band encompassing the wording and design. However, the drawing displays the mark as KATANACRAFT (stylized plus design) with a clearly defined rectangular band encompassing the wording and design. The mark on the specimen does not match the mark in the drawing because it does not feature a clearly defined rectangular encompassing the wording and design. Applicant has thus failed to provide the required evidence of use of the mark in commerce. See TMEP §807.12(a).
Applicant may respond to this refusal by satisfying one of the following:
(1) Submit an amendment of the description that agrees with both the mark depicted in the drawing of record and on the specimen of record. See 37 C.F.R. §2.72(a)-(b). The following amended description is suggested, if accurate: “The mark consists of the word "KATANACRAFT" displayed along the bottom side of a rectangular background and surmounted by a first horizontal sweep extending from a position over the letter "K" to extend to the right and curve first upwardly and then downwardly to a pointed end position between the letters "A" and "F" and a second sweep extending from a pointed end over the "T" and expanding to the right to curve upwardly in an enlarged shield area and then curved downwardly tapering to a pointed end also located between the letter "A" and the letter "F". The rectangular background is not claimed as a feature of the mark.” Applicant may amend the mark in the drawing to match the mark on the specimen but may not make any other changes or amendments that would materially alter the drawing of the mark. See 37 C.F.R. §2.72(a)-(b); TMEP §807.14.
(2) Submit a different specimen (a verified “substitute” specimen) for each applicable international class that (a) shows the mark in the drawing in actual use in commerce for the goods and/or services in the application or amendment to allege use, and (b) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use.
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).
For more information about drawings and instructions on how to satisfy these response options online using the Trademark Electronic Application System (TEAS) form, see the Drawing webpage.
For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
Furthermore, if applicant has an amendment that does not require the payment of a fee, submission of a specimen, response to a statutory refusal or declaration signature, applicant is encouraged to telephone the examining attorney to expedite the processing of the application.
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
/Brian P. Callaghan/
Trademark Examining Attorney
Law Office 108
Phone: (571) 272-4906
Email: brian.callaghan@uspto.gov
RESPONSE GUIDANCE