To: | Ojeda Torres, Stephen (alexwu@bkipgroup.com) |
Subject: | U.S. Trademark Application Serial No. 88681314 - HEARTLESS INC. - N/A |
Sent: | February 17, 2020 01:12:31 PM |
Sent As: | ecom114@uspto.gov |
Attachments: | Attachment - 1 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88681314
Mark: HEARTLESS INC.
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Correspondence Address:
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Applicant: Ojeda Torres, Stephen
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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: February 17, 2020
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.
Trademark Act Section 2(d) Search Results – No Conflicting Marks Found
The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting marks that would bar registration under Trademark Act Section 2(d). 15 U.S.C. §1052(d); TMEP §704.02.
However, the applicant must address the following substantive/procedural issues:
Summary of Issues
Specimen Refusal – Does Not Match Mark Drawing – Not Material
Mark shown on drawing does not match mark on specimen. Registration is refused because the specimen does not show the mark in the drawing in use in commerce in International Class(es) 025, 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 without any border around the heart (on the white shirt) and with pink flowers (on the black shirt). However, the drawing displays the mark with a black border around the heart and with red roses. The mark on the specimen does not match the mark in the drawing because the white shirt shows the mark without a border around the heart, and the black shirt shows the mark with pink roses. Applicant has thus failed to provide the required evidence of use of the mark in commerce. See TMEP §807.12(a).
Response options. Applicant may respond to this refusal by satisfying one of the following:
(1) Submit a new drawing of the mark that shows the mark on the specimen and, if appropriate, an amendment of the description and/or color claim that agrees with the new drawing. See 37 C.F.R. §2.72(a)-(b). The following amended description is suggested, if accurate: If applicant chooses to submit a drawing that matches the white shirt: “The mark consists of the stylized black wording "Heartless Inc." with a red cracked heart on top of two red roses with green stems.” If applicant chooses to submit a drawing that matches the black shirt: The mark consists of the stylized black wording "Heartless Inc." with a red cracked heart on top of two pink roses with green stems. Additionally, if applicant chooses to submit a drawing that matches the black shirt, applicant will need to amend the color claim to add the color pink as follows: The color(s) red, green, pink, black, is/are claimed as a feature of the mark
(2) 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. Specimens for goods include a photograph of (1) the actual goods bearing the mark; (2) an actual container, packaging, tag or label for the goods bearing the mark; or (3) a point-of-sale display showing the mark directly associated with the goods. See 37 C.F.R. §2.56(b)(1), (c); TMEP §904.03(a)-(m). A webpage specimen submitted as a display associated with the goods must show the mark in association with a picture or textual description of the goods and include information necessary for ordering the goods. TMEP §904.03(i); see 37 C.F.R. §2.56(b)(1), (c).
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)(1), (c); TMEP §1301.04(a), (h)(iv)(C).
Any web page printout or screenshot submitted as a specimen, whether for goods or services, must include the webpage’s URL and the date it was accessed or printed. 37 C.F.R. §2.56(c).
For more information about drawings and instructions on how to satisfy these response options using the online Trademark Electronic Application System (TEAS) form, see the Drawing webpage.
Disclaimer Statement Required
Business type designations and abbreviations such as “Corporation,” “Inc.,” “Company,” “LLC,” and “Ltd.” or family business designations such as “& Sons” or “Bros.” must be disclaimed, because they merely indicate applicant’s business type or structure and generally have no source-indicating capacity. TMEP §1213.03(d); see, e.g., Goodyear’s India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U.S. 598, 602-03 (1888); In re Piano Factory Grp., Inc., 85 USPQ2d at 1526; In re Patent & Trademark Servs., Inc., 49 USPQ2d at 1539-40.
The attached evidence from Merriam-Webster defines INC as “incorporated.” Therefore, this wording must be disclaimed because it merely describes applicant’s business structure, namely, that applicant is incorporated.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “INC.” apart from the mark as shown.
For an overview of disclaimers and instructions on how to provide one using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
Amended Mark Description Required
A complete description must identify all the literal and design elements in the mark and specify where the colors appear in those elements. See 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §§807.07(a) et seq. If black, white, and/or gray are not being claimed as a color feature of the mark, applicant must exclude them from the color claim and include in the description a statement that black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark. See TMEP §807.07(d).
The following description is suggested, if accurate:
The mark consists of the black stylized wording "Heartless Inc." with a red cracked heart with a black border on top of two red roses with green stems.
The color(s) red, green, and black are claimed as a feature of the mark.
Response Guidelines
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.
Please call or email the assigned trademark examining attorney with questions about this Office action. Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action. See TMEP §§705.02, 709.06.
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
How to respond. Click to file a response to this nonfinal Office action.
Bechhofer, Yocheved
/Yocheved Bechhofer/
Examining Attorney
Law Office 114
571-272-9329
Yocheved.Bechhofer@uspto.gov
RESPONSE GUIDANCE