To: | Andrew D Brown (gonzalez@thegonzalezlawoffice.com) |
Subject: | U.S. Trademark Application Serial No. 88605068 - SIREN - N/A |
Sent: | December 11, 2019 05:30:51 PM |
Sent As: | ecom123@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88605068
Mark: SIREN
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Correspondence Address:
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Applicant: Andrew D Brown
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Reference/Docket No. N/A
Correspondence Email Address: |
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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: December 11, 2019
SEARCH OF OFFICE’S DATABASE OF MARKS
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).
SECTIONS 1 AND 45 REFUSAL – SPECIMEN DOES NOT SHOW USE IN COMMERCE IN CLASS 15
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 and/or 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).
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 or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the goods and/or 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), 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 OF DEFINITE IDENTIFICATION AND APPROPRIATE CLASSIFICATION
Certain wording in the identification of goods is indefinite and must be clarified for the reasons discussed below. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Specifically, the wording “Musical instrument parts and accessories, namely, string action gauge, stands, and cases” is too broad and can encompass goods that are in more than one International Class. For example, “musical instrument accessories, namely, musical instrument stands and cases for musical instruments” are in International Class 15, but “measuring rulers,” “measuring rules,” and “length measuring gauges” are in International Class 9. Accordingly, applicant should further specify the nature of the goods being referenced, and suggested amendments are offered below.
Please note, in addition to the need for this further specification so as to allow for appropriate identification and classification, the USPTO requires such specificity in order for a trademark examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks.
Applicant may adopt the following identification, if accurate:
Class 9: Measuring rules in the nature of string action gauges
Class 15: Musical instrument accessories, namely, musical instrument stands and cases for musical instruments
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.
MULTIPLE-CLASS APPLICATION REQUIREMENTS
(1) List the goods by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule). Specifically, the application identifies goods based on use in commerce that are classified in at least 2 classes. However, applicant submitted a fee sufficient for only 1 class. Applicant must either (a) submit the filing fees for the classes not covered by the submitted fee(s) or (b) restrict the application to the number of classes covered by the fees already paid.
(3) Submit verified dates of first use of the mark anywhere and in commerce for each international class. See more information about verified dates of use.
(4) Submit a specimen for each international class. The current specimen is acceptable for Class 9, but applicant needs a specimen for any additional class(es). See more information about specimens.
Examples of specimens for goods include tags, labels, instruction manuals, containers, and photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale. 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.
(5) Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.” See more information about verification.
See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
AMENDMENT/CLARIFICATION OF LEGAL ENTITY TYPE REQUIRED
If applicant is a sole proprietorship, the following format should be used: “[name of sole proprietorship here (for example, “Siren” – if that is the actual name of the sole proprietorship)], a Canadian sole proprietorship, composed of [insert name of individual here], a citizen of [insert country of citizenship here].” TMEP §803.03(a). When using the above format, the name of the sole proprietorship and the name of the individual can be the same.
If applicant is applying as an individual doing business under an assumed name, the following format should be used: “Andrew D. Brown, a citizen of [insert country of citizenship here], doing business as Siren.” TMEP §§803.02(a), 803.04.
If applicant is applying as an individual, the following format should be used: “Andrew D. Brown, a citizen of [insert country of citizenship here].” TMEP §§803.03(a), 803.04.
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.
/Victor Cerda/
Examining Attorney
Trademark Law Office 123
(571) 270-1280
Victor.Cerda@uspto.gov
ADDITIONAL RESPONSE GUIDANCE