To: | Ruben Kasper LLC (rubenkasperllc@gmail.com) |
Subject: | U.S. Trademark Application Serial No. 88597215 - BALAYAGE BROWS - N/A |
Sent: | September 11, 2020 04:01:54 PM |
Sent As: | ecom117@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88597215
Mark: BALAYAGE BROWS
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Correspondence Address:
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Applicant: Ruben Kasper LLC
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Reference/Docket No. N/A
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.
Issue date: September 11, 2020
This action is in response to the communication filed on August 18, 2020 in which applicant revived this abandoned application and argued against the Section 2(e)(1) refusal.
In light of applicant’s arguments, the Section 2(e)(1) refusal and the generic advisory are withdrawn.
Applicant did not address the specimen refusal. This refusal is now made final.
SUMMARY OF ISSUES
SPECIMEN UNACCEPTABLE
When determining whether a mark is used in connection with the services in the application, a key consideration is the perception of the user. In re JobDiva, Inc., 843 F.3d 936, 942, 121 USPQ2d 1122, 1126 (Fed. Cir. 2016) (citing Lens.com, Inc. v. 1-800 Contacts, Inc., 686 F.3d 1376, 1381-82, 103 USPQ2d 1672, 1676 (Fed Cir. 2012)). A specimen must show the mark used in a way that would create in the minds of potential consumers a sufficient nexus or direct association between the mark and the services being offered. See 37 C.F.R. §2.56(b)(2); In re Universal Oil Prods. Co., 476 F.2d 653, 655, 177 USPQ2d 456, 457 (C.C.P.A. 1973); TMEP §1301.04(f)(ii).
To show a direct association, specimens consisting of advertising or promotional materials must (1) explicitly reference the services and (2) show the mark used to identify the services and their source. In re The Cardio Grp., LLC, 2019 USPQ2d 227232, at *2 (TTAB 2019) (quoting In re WAY Media, LLC, 118 USPQ2d 1697, 1698 (TTAB 2016)); TMEP §1301.04(f)(ii). Although the exact nature of the services does not need to be specified in the specimen, there must be something which creates in the mind of the purchaser an association between the mark and the services. In re Adair, 45 USPQ2d 1211, 1215 (TTAB 1997) (quoting In re Johnson Controls Inc., 33 USPQ2d 1318, 1320 (TTAB 1994)).
In the present case, applicant’s August 29, 2019 specimen shows the mark in connection with a “masterclass” at the “2nd Annual Permanent Makeup Conference” where participants learn how to “creat[e] realistic looking hairstrokes.” The applied-for services, however, are “Permanent makeup services; Tattooing services; Cosmetic tattooing services; Semi-permanent makeup services.” Because the specimen appears to show the mark in use in connection with particular education services in the field of permanent makeup application techniques, rather than in connection with the applied-for permanent make-up or related services, the specimen does not show the mark in connection with the applied-for services.
Applicant did not submit a substitute specimen in its August 18, 2020 response, although applicant did submit a written explanation of the services provided, and provided evidence in the form of a social media posting for the same “2nd Annual Permanent Makeup Conference” that is referenced in the August 29, 2019 specimen, as well as two close-up photographs of a person’s eyebrows. These are not acceptable specimens for the following reasons: First, they were submitted as evidence, not substitute specimens and therefore are not properly verified. See more information about the verification requirements in the “Response Options” section, below. Second, they do not show the mark in use in commerce in connection with the applied-for services. The social media posting again shows the mark in connection with a “masterclass” where participants learn permanent makeup application techniques; it does not show the mark in connection with the applied-for permanent makeup services. And the photographs of eyebrows do not show the mark at all.
Thus, applicant has not provided an acceptable specimen of use.
Examples of specimens. Specimens for services must show a direct association between the mark and the services and include: (1) copies of advertising and marketing material, (2) a photograph of business signage or billboards, or (3) materials showing the mark in the sale, rendering, or advertising of the services. See 37 C.F.R. §2.56(b)(2), (c); TMEP §1301.04(a), (h)(iv)(C).
Any webpage printout or screenshot submitted as a specimen must include the webpage’s URL and the date it was accessed or printed. 37 C.F.R. §2.56(c).
Response options. 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 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.
(2) Amend the filing basis to intent to use under Section 1(b) (which includes withdrawing an amendment to allege use, if one was filed), as no specimen is required before publication. This option will later necessitate additional fee(s) and filing requirements, including a specimen.
For an overview of the response options referenced above and instructions on how to satisfy these options using the online Trademark Electronic Application System (TEAS) form, see the Specimen webpage.
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).
/Miah Rosenberg LaMont/
Examining Attorney
Law Office 117
(571) 272-6170
miah.lamont@uspto.gov
RESPONSE GUIDANCE