To: | The Toro Company (linda.byrne@toro.com) |
Subject: | U.S. Trademark Application Serial No. 88684022 - HORIZON - 406TM |
Sent: | August 24, 2020 06:55:53 PM |
Sent As: | ecom127@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88684022
Mark: HORIZON
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Correspondence Address: |
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Applicant: The Toro Company
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Reference/Docket No. 406TM
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: August 24, 2020
In a previous Office action dated January 4, 2020, the trademark examining attorney refused registration of the applied-for mark based on Trademark Act Section 2(d) for a likelihood of confusion with registered marks. In addition, applicant was required to amend the identification of goods and satisfy any applicable multiple-class application requirements.
Applicant responded on February 14, 2020, in which it argued against the Section 2(d) refusal and amended the identification of goods. Based on applicant’s response, identification of goods requirement was satisfied, and the multiple-class application requirements were obviated. See TMEP §§713.02, 714.04. However, applicant’s arguments against the Section 2(d) Refusal were found unpersuasive, and the refusal was made Final in an Office action dated April 6, 2020.
On May 15, 2020, applicant filed an amendment to allege use, in which it submitted a specimen of use. The amendment to allege use was accepted pursuant to satisfying the basic filing requirements for an amendment to allege use. Thereafter, on August 13, 2020, applicant filed a request for reconsideration of the Section 2(d) refusal, in which it provided a consent agreement between the applicant and registrant. The trademark examining attorney finds that the consent agreement is acceptable. Therefore, the Section 2(d) refusal for a likelihood of confusion with the registered mark has been obviated. However, applicant’s submitted specimen is unacceptable for the reasons discussed herein; as a result, the following specimen refusal must issue.
The following is a SUMMARY OF ISSUES that applicant must address:
• Specimen Refusal – New Issue
SPECIMEN REFUSAL – NEW ISSUE
Specimen does not show use in specific class. Registration is refused because the specimen does not show the applied-for mark as actually used in commerce in connection with any of the goods specified 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); In re Keep A Breast Found., 123 USPQ2d 1869, 1876-79 (TTAB 2017); TMEP §§904, 904.07(a), 1301.04(d), (g)(i). An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark as actually used 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); see In re Gulf Coast Nutritionals, Inc., 106 USPQ2d 1243, 1247 (TTAB 2013).
Specifically, applicant has submitted as specimen images of a print catalog advertising applicant’s lawn care products which includes an image of a control console for a lawn mower that applicant has described as a “software console.” However, nothing in the specimen makes any reference or connection to the downloadable computer software applicant has identified in Class 009 in the amendment to allege use. Thus, while the submitted specimen may show the mark being used in connection with applicant’s lawn mowers, an “onboard intelligence platform”, or a control console thereof, it does not show the applied-for mark being used on or in connection with the downloadable computer software identified by applicant in Class 009.
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).
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 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) (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.
RESPONSE GUIDELINES
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.
/Laura Taraban/
Laura Taraban
Trademark Examining Attorney
Law Office 127
(571) 272-3352
laura.taraban@uspto.gov
RESPONSE GUIDANCE