Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

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:  November 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.

 

SUMMARY OF ISSUES

 

·         Section 2(d) Refusal—Likelihood of Confusion

 

·         Section 2(e)(1) Refusal and Corresponding Information Requirement

 

·         Identification of Goods/Services—Clarification Required

 

·         Specimen Refusal and Corresponding Information Requirement

 

SECTION 2(d) REFUSAL—LIKELIHOOD OF CONFUSION:

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos.:

 

• 4027089, 4-TELL, in standard characters, for “Computer software for making and providing content, product, and service recommendations and computer software for behavioral analytics; Computer software for making and providing content, product, and service recommendations and computer software for behavioral analytics that may be downloaded from a global computer network” in Class 009;

 

• 4101018, 4-TELL, in standard characters, for “Software as a service (SAAS) services featuring software for making and providing content, product and service recommendations; and Software as a service (SAAS) services featuring software for behavioral analytics” in Class 042;

 

• 5710463, FORTELL COMMUNICATIONS, in standard characters, for “Educational and entertainment services, namely, providing motivational public speaking services related to the fields of youth culture, fashion education and education; consulting services related to the fields of youth culture, fashion education and education” in Class 041; and

 

• 5710464, FORTELL COMMUNICATIONS, with a design, for “Educational and entertainment services, namely, providing motivational public speaking services related to the fields of youth culture, fashion education and education; consulting services related to the fields of youth culture, fashion education and education” in Class 041.

 

Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

Summary of Applicant’s Mark and Goods/Services

 

Applicant’s FORETELL, in standard characters, is for:

 

• Class 009: Downloadable electronic computer programs and computer software for social networking that may be accessed via the Internet, computers and wireless devices; downloadable software in the nature of a mobile application for the transmission of messages among computer users concerning foretelling, horoscopes and psychics.

 

• Class 038: Telecommunications, namely, electronic transmission of data and digital messaging via global computer and communication networks; providing on-line chat rooms and forums for transmission of messages among computer users in the field of spiritual, mental and emotional health and wellness issues and issues of general interest; video and audio conferencing services conducted via the web, telephone, and mobile devices; receiving and exchanging of information, text, sounds, images, data and messages, namely, electronic transmission of information, text, sounds, images, data and messages; data streaming on the Internet; communications by computer terminals; e-mail services; information, advisory and consultancy services relating to the aforesaid.

 

• Class 041: Educational and entertainment services, namely, providing a website featuring biographical profiles of advisors, educators and professional specialists in various areas of expertise; providing a website featuring informal instruction on a variety of professional issues and issues of general interest, namely, tax preparation, home technology set-up, home repairs and maintenance, cooking, computer technology, mathematics, at-home health remedies, first-aid, self-help skills, automotive repair, gardening, legal practice, sports, business formation, design, shopping, early childhood instruction, and elementary, secondary, and college level educational topics; providing a website featuring advice on a variety of professional issues and issues of general interest, namely, advice concerning education options to pursue career opportunities, advice concerning happiness and personal relationships for entertainment purposes; providing online interactive peer-to-peer instruction in the field of professional and specialist advice and issues of general interest, namely, tax preparation, home technology set-up, home repairs and maintenance, cooking, computer technology, mathematics, at-home health remedies, first-aid, self-help skills, automotive repair, gardening, legal practice, sports, business formation, design, shopping, early childhood instruction, and elementary, secondary, and college level educational topics; online digital publishing services.

 

• Class 042: Application service provider (ASP) featuring software for use in editing and creating web-site content; computer services, namely, editing websites for others; application service provider (ASP) services featuring software for use by others to create photo galleries, news feeds, blogs, advertising, and standard web content in hypertext markup language (HTML) on web sites; application service provider (ASP), namely, hosting computer software applications for others.

 

• Class 045: Internet based social networking, and introduction services; forecasting services in the nature of horoscope and fortune telling.

 

Basis for Likelihood of Confusion

 

Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties.  See 15 U.S.C. §1052(d).  Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”).  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017).  Only those factors that are “relevant and of record” need be considered.  M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018). 

 

Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis:  (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services.  See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.

 

Similarity of the Marks

 

Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression.  Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v).  “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.”  In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)); TMEP §1207.01(b).

 

The marks’ respective similar wording, being FORETELL/4-TELL/FORTELL, are essentially phonetic equivalents and thus sound similar.  Similarity in sound alone may be sufficient to support a finding that the marks are confusingly similar.  In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b)(iv).

 

Additionally, when comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.”  Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b).  The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks.  In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (CCPA 1971)); TMEP §1207.01(b).

 

Although Registration Nos. 5710463 and 5710464 contain additional wording, disclaimed matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant when comparing marks.  In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).

 

Finally, although Registration No. 5710464 contains a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services.  In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii).  Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed.  In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).

 

This similarity in sound, in conjunction with consumers’ general recollection, creates a shared commercial impression that would likely confuse consumers as to the origin of applicant’s and registrants’ goods/services.

 

Therefore, applicant’s mark is similar to registrants’ marks.

 

Relatedness of the Goods/Services

 

The goods and/or services are compared to determine whether they are similar, commercially related, or travel in the same trade channels.  See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).

 

Determining likelihood of confusion is based on the description of the goods and/or services stated in the application and registration at issue, not on extrinsic evidence of actual use.  See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).  

 

In this case, Registration Nos. 4027089’s and 4101018’s broad identifications for “computer software for making and providing content” presumably encompasses applicant’s Class 009 goods and applicant’s identifications for “Application service provider (ASP) featuring software for use in editing and creating web-site content; computer services, namely, editing websites for others; application service provider (ASP) services featuring software for use by others to create photo galleries, news feeds, blogs, advertising, and standard web content in hypertext markup language (HTML) on web sites” in Class 042.  See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015).  Thus, applicant’s and registrant’s goods/services here are legally identical.  See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).

 

Additionally, the attached Internet evidence from

 

·         http://www.facebook.com/local/lists/245019872666104/ with http://www.facebook.com/, http://developers.facebook.com/docs/games/services/contenthosting/, http://www.messenger.com/, http://www.facebook.com/marketplace/learn-more/,

 

·         http://www.producthunt.com/posts/shoelace-3 with http://cloud.google.com/saas/, http://www.google.com/webhp?hl=en&sa=X&ved=0ahUKEwi63_f4kobmAhXQxVkKHbo_DLIQPAgH, http://duo.google.com/about/?usp=duo_ald, http://shopping.google.com/?nord=1, http://about.google/products/?tip=autofill,

 

·         http://app-fortunica.com/ with http://app-fortunica.com/faq,

 

·         http://play.google.com/store/apps/details?id=fr.telemaque.voyance&hl=en_US,

 

·         http://speakerhub.com/ with http://speakerhub.com/speakers, http://speakerhub.com/skillcamp, and

 

·         http://www.ted.com/topics/motivation with http://www.ted.com/topics, http://www.ted.com/talks, http://www.ted.com/participate/ted-fellows-program, http://www.ted.com/speakers, http://www.ted.com/speakers/sandra_aamodt

 

establishes that the same entity commonly provides:

 

• content-providing software alongside various telecommunications-related services, social networking, and software hosting;

 

• content-providing software alongside life forecasting services; and

 

• motivational speaking alongside profiles about speakers/instructors, instruction on wide varieties of topics, and publishing of various types of content.

 

Additionally, these services are marketed under the same mark, and they are sold or provided through the same trade channels.  Thus, applicant’s and registrants’ goods/services are considered related for likelihood of confusion purposes.  See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).

 

Conclusion

 

Taken together, the similarity of the marks and the relatedness of applicant’s goods/services to registrants’ goods/services result in the determination that there is a likelihood of confusion.  Therefore, registration is refused under Section 2(d) of the Trademark Act.

 

SECTION 2(e)(1) REFUSAL—MERELY DESCRIPTIVE:

 

Registration is also refused because the applied-for mark merely describes applicant’s goods/services.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.

 

A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s goods and/or services.  TMEP §1209.01(b); see, e.g., In re TriVita, Inc., 783 F.3d 872, 874, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005) (citing Estate of P.D. Beckwith, Inc. v. Comm’r of Patents, 252 U.S. 538, 543 (1920)). 

 

“FORETELL” is defined as “to tell of or indicate beforehand; predict,” and third parties use this wording descriptively in similar contexts.  See attachments from http://www.ahdictionary.com/word/search.html?q=foretell, http://apps.apple.com/us/app/palm-reading-predict-your-future/id976854658, and http://meetyourpsychic.com/readings/psychic-reading-faq.  Further, applicant’s own identification references use for “foretelling, horoscopes and psychics.”

 

Accordingly, FORETELL merely describes a use/purpose of applicant’s identified goods/services—being used to predict users’ futures or used in the providing of those predictions to users—and registration is refused under Section 2(e)(1) of the Trademark Act.

 

Information Requirement as to Descriptiveness

 

Due to the descriptive nature of the applied-for mark, applicant must provide the following information and documentation regarding the goods and/or services and wording appearing in the mark: 

 

(1)        Fact sheets, instruction manuals, brochures, advertisements and pertinent screenshots of applicant’s website as it relates to the goods and/or services in the application, including any materials using the terms in the applied-for mark.  Merely stating that information about the goods and/or services is available on applicant’s website is insufficient to make the information of record.; 

 

(2)        If these materials are unavailable, applicant should submit similar documentation for goods and services of the same type, explaining how its own product or services will differ.  If the goods and/or services feature new technology and information regarding competing goods and/or services is not available, applicant must provide a detailed factual description of the goods and/or services.  Factual information about the goods must make clear how they operate, salient features, and prospective customers and channels of trade.  For services, the factual information must make clear what the services are and how they are rendered, salient features, and prospective customers and channels of trade.  Conclusory statements will not satisfy this requirement.; and

 

(3)        Applicant must respond to the following questions:

 

·         Are applicant’s goods and services provided to predict consumers’ futures or used in the process of providing those predictions to consumers?

 

See 37 C.F.R. §2.61(b); TMEP §§814, 1402.01(e).  Failure to comply with a request for information is grounds for refusing registration.  In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814. 

 

Although applicant’s mark has been refused registration, applicant may respond to the refusals by submitting evidence and arguments in support of registration.  However, if applicant responds to the refusals, applicant must also respond to the requirements set forth below.

 

IDENTIFICATION OF GOODS/SERVICES—CLARIFICATION REQUIRED:

 

Applicant must clarify wording in the identification because it is indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  For example, “email services” could be “electronic transmission of e-mail” or “e-mail fax services” in Class 038, and “electronic storage of archived emails” in Class 042.

 

Suggested Wording

 

Applicant may substitute the following wording, if accurate:

 

CLASS 009:    downloadable electronic computer programs and computer software for social networking that may be accessed via the Internet, computers and wireless devices; downloadable software in the nature of a mobile application for the transmission of messages among computer users concerning foretelling, horoscopes and psychics

 

CLASS 038:    telecommunications, namely, electronic transmission of data and digital messaging via global computer and communication networks; providing on-line chat rooms and forums for transmission of messages among computer users in the field of spiritual, mental and emotional health and wellness issues and issues of general interest; video and audio conferencing services conducted via the web, telephone, and mobile devices; receiving and exchanging of information, text, sounds, images, data and messages, namely, electronic transmission of information, text, sounds, images, data and messages via electronic communications networks; data streaming on the Internet; communications by computer terminals; e-mail services, namely, {specify the nature of the services in Class 038, e.g., electronic transmission of e-mail, e-mail fax services}; information, advisory and consultancy services relating to telecommunications

 

CLASS 041:    educational and entertainment services, namely, providing a website featuring educational and entertainment information involving the biographical profiles of advisors, educators and professional specialists in various areas of expertise; providing a website featuring informal instruction on a variety of professional issues and issues of general interest, namely, tax preparation, home technology set-up, home repairs and maintenance, cooking, computer technology, mathematics, at-home health remedies, first-aid, self-help skills, automotive repair, gardening, legal practice, sports, business formation, design, shopping, early childhood instruction, and elementary, secondary, and college level educational topics; providing a website featuring advice on a variety of professional issues and issues of general interest, namely, advice concerning education options to pursue career opportunities, advice concerning happiness and personal relationships for entertainment purposes; educational services, namely, providing online interactive peer-to-peer instruction in the field of professional and specialist advice and issues of general interest via an online website, namely, tax preparation, home technology set-up, home repairs and maintenance, cooking, computer technology, mathematics, at-home health remedies, first-aid, self-help skills, automotive repair, gardening, legal practice, sports, business formation, design, shopping, early childhood instruction, and elementary, secondary, and college level educational topics; online digital multimedia publishing services

 

CLASS 042:    application service provider (ASP) featuring software for use in editing and creating web-site content; computer services, namely, editing websites for others; application service provider (ASP) services featuring software for use by others to create photo galleries, news feeds, blogs, advertising, and standard web content in hypertext markup language (HTML) on web sites; application service provider (ASP), namely, hosting computer software applications for others; email services, namely, {specify the nature of the services in Class 042, e.g., electronic storage of archived emails, filtering of unwanted e-mails}

 

CLASS 045:    Internet based social networking, and introduction services; forecasting services in the nature of horoscope and fortune telling

 

For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

 

Scope Advisory

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See TMEP §1402.07(e).

 

SPECIMEN REFUSAL AND CORRESPONDING INFORMATION REQUIREMENT:

 

Specimen refused.  Registration is refused because the specimen appears to consist of a digitally altered image or mock-up of the mark on a website 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/services 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); 1301.01 et seq.  “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 the mark is used in the sale, advertising, or rendering of the services, and (3) the goods are actually sold or transported in commerce, and the services are actually rendered in commerce.  See 15 U.S.C. §1127. 

 

A webpage 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 images, which could not be independently verified via the internet, appear to show a mock-up of the applied-for mark on webpages practically identical to applicant’s specimen in its co-pending application for Serial No. 88638345.  See, e.g., attachments from http://lifechart.page/ and http://lifechart.page/services/ (showing highly similar webpages bearing another mark).  Therefore, the submitted specimen cannot be accepted.

 

Additional information/documentation 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.  See 37 C.F.R. §2.61(b); TMEP §814.  Answer for each specimen/photograph/image provided.  For each webpage submission, either as a specimen or 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, to permit proper and complete examination of this application and an accurate record of the entirety of the webpage submission.

 

(1)        Identify the particular goods/service(s) listed in the application for which the specimen(s) was submitted to show use of the mark.

 

(2)        Was the specimen created for submission with this application?  If so, specify the date each specimen was created.  If the applicant obtained the content of the webpage or image(s) of the mark in connection with the services shown in the specimen(s) from a third-party website, provide the URL for the website and a digital copy of relevant webpage(s).

 

(3)        Provide information about how applicant provides the goods and advertises the services and representative examples from online or print sources showing how the mark appears in applicant’s advertising of the services.  Provide the name of the online or print source and a complete copy of the webpage(s) or print page(s) showing the services advertised for sale.  For each source, specify when the services were first advertised for sale and if the services are still advertised for sale in that environment.

 

(4)        For the goods/services identified in response to question (1), specify the date the goods were sold/provided and the services were first rendered or provided to or within the United States, 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 refusal of registration due to the specimen’s failure to show actual use in commerce by amending the filing basis to allege intent to use the mark in commerce, for which no specimen is required now.  See 37 C.F.R. §2.34.  This option will later necessitate additional fee(s) and filing requirements such as providing a specimen. 

 

Alternatively, applicant may also respond to the refusal by submitting 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 or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the services identified in the application or amendment to allege use.  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 an overview of these response options and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, see the Specimen webpage.

 

If applicant submits a verified substitute specimen, applicant must also fully respond to all the requirements for information and documentation.  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 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 information or materials of record.  See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).  However, amending the application’s filing basis to intent-to-use under Section 1(b) will also moot the requirements for information and documentation.

 

GENERAL RESPONSE GUIDELINES

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

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.    

 

 

Sjogren, Jeffrey

/Jeffrey Sjogren/

Examining Attorney - Law Office 122

Phone: 571-272-5279

Fax: 571-273-5578

 

 

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 November 25, 2019 for

U.S. Trademark Application Serial No. 88582114

 

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. 

 

 

Sjogren, Jeffrey

/Jeffrey Sjogren/

Examining Attorney - Law Office 122

Phone: 571-272-5279

Fax: 571-273-5578

 

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 November 25, 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.”