To: | BLUE, JOHN D. (johndblue@yahoo.com) |
Subject: | U.S. Trademark Application Serial No. 88678165 - 420DARTS - N/A |
Sent: | January 09, 2020 02:20:56 PM |
Sent As: | ecom102@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88678165
Mark: 420DARTS
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Correspondence Address:
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Applicant: BLUE, JOHN D.
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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: January 09, 2020
This Office action is in response to applicant’s communication filed on 12/05/2019. The identification of goods requirements have been satisfied. TMEP §§713.02, 714.04.
FINAL REFUSAL: Specimens Do Not Show Use for Class 009 Software
Registration is finally refused because the specimen does not show the applied-for mark in use in commerce in International Class 009. 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). Specifically, the specimens show use of the mark in the context of providing online computer games in Class 041. Class 009 game software must either be downloadable software or software recorded on physical media.
In the response, applicant argues that the original specimens of use should be accepted because these show use on the mark with the software on applicant’s website: “There are NO substitute specimens attached. * The 12 original attached specimens were in use in commerce on or in connection with the goods listed in the application at least as early as the filing date of the present application. The applicant has filed 161 Federal Trade/Service Mark personal applications. He has also spent on a lot of time and money preparing all the 420AppGames? for the consumer to play. Presently, there are numerous playable app games, with additional app games being coding as I write. All of the app games on the applicant?s website are played the same way. A clickable link is provided for the consumer to play any app game. The applicant believes he has responded to all of the examiner?s points. Therefore, the present application should be approved for Publication and approved for registered on the Principal register.” Applicant also submitted screenshots of the instant application from the TICRS file from the Trademarks database the showing the listing of the existing specimen image files. By definition, downloadable or recorded application software is not software used to play games online on applicant’s website. The specimens of use only show use of an online game service which is an entertainment service in class 041. Thus, applicant’s arguments and evidence are not persuasive and not relevant to establishing that use of software for online games on applicant’s website shows use of the mark with downloadable or recorded software goods in class 009.
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 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). However, leaflets, handbills, advertising circulars, and other advertising materials generally are not acceptable specimens for goods. See TMEP §§904.03 et seq.
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 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.
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 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).
Anthony Rinker
/Anthony Rinker/
Trademark Examining Attorney
Law Office 102
Ph. 571-272-5491
anthony.rinker@uspto.gov
RESPONSE GUIDANCE