Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

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:  May 11, 2020

 

 

This letter responds to the applicant’s communication filed on April 16, 2020.   The examining attorney acknowledges the applicant’s proposed amended identification and substitute specimen.   For reasons that follow, the meaning/significance, applicant/entity, identification of goods/scope requirements and specimen refusal are each maintained and made FINAL.

 

MEANING/SIGNIFICANCE/REQUEST FOR INFORMATON – FINAL

 

In the initial Office Action dated March 5, 2020, the applicant was required to provide information as to the meaning or significance as to the term ROSE as to the goods or in the industry and specifically whether the goods were derived in whole or in part from any part of the rose plant.  This was necessary to determine whether the mark was descriptive of the services.  Applicant was advised that failure to comply with a request for information is grounds for refusing registration.

 

Applicant has not addressed this issue by way of response.  Accordingly for reasons stated herein and in the initial Office Action, the meaning/significance request for information requirement is therefore maintained and made FINAL. 

 

APPLICANT/ENTITY – FINAL

 

In the initial Office Action dated March 5, 2020, the examining attorney found that the name of an individual person appeared in the section of the application intended for the trademark owner’s name; however, the legal entity was set forth as a named limited liability company.  Applicant was required to clarify this inconsistency.  See 37 C.F.R. §§2.32(a)(2), (a)(3)(i)-(ii), 2.61(b); TMEP §803.02(a). 

This requirement further stated the following:

If applicant is an individual, applicant should simply request that the legal entity be amended to “individual” and must indicate his/her country of citizenship for the record.  37 C.F.R. §2.32(b)(3)(i); TMEP §803.03(a).  Alternatively, if applicant is a limited liability company, applicant must provide the correct name of the limited liability company and the U.S. state or foreign country of incorporation or organization.  37 C.F.R. §2.32(a)(3)(ii); TMEP §803.03(h).

If, in response to the above request, applicant provides information indicating that it is not the owner of the mark, registration may be refused because the application was void as filed.  See 37 C.F.R. §2.71(d); TMEP §§803.06, 1201.02(b).  An application must be filed by the party who owns or is entitled to use the mark as of the application filing date.  See 37 C.F.R. §2.71(d); TMEP §1201.02(b).

Applicant has not addressed this issue by way of response.  Accordingly for reasons stated herein and in the initial Office Action, this requirement is therefore maintained and made FINAL. 

 

IDENTIFICATION OF GOODS/SCOPE – FINAL

 

In the initial Office Action dated March 5, 2020, the examining attorney found that the proposed voluntary amendment to the identification was not acceptable because it exceeded the scope of the identification in the application.  See 37 C.F.R. §§2.32(a)(6), 2.71(a); TMEP §§805, 1402.06 et seq., 1402.07.  Applicant was advised that it’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, the original identification in the application, and any previously accepted amendments, remained operative for purposes of future amendment.  See 37 C.F.R. §2.71(a); TMEP §1402.07(d).

 

In this case, the application originally identified the goods and/or services as follows:  “collagen used as a raw ingredient in the manufacture of cosmetics.”  However, the proposed amendment identifies the following goods and/or services:  “Vegan Collagen Dietary Supplement which includes vitamin C, Biotin, Iron, Zinc, Theanine, Monk Fruit, and Water-soluble dietary fiber.”  This proposed amendment is beyond the scope of the original identification because these are altogether different goods for different uses which move in different channels of trade. 

In response to this requirement, the applicant has now provided the following amended identification of goods:  Vegan Rose Collagen Dietary Supplement.

 

Once again, the proposed amendment to the identification is not acceptable because it exceeds the scope of the identification in the application.  See 37 C.F.R. §§2.32(a)(6), 2.71(a); TMEP §§805, 1402.06 et seq., 1402.07.  Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, the original identification in the application, and any previously accepted amendments, remain operative for purposes of future amendment.  See 37 C.F.R. §2.71(a); TMEP §1402.07(d).

 

In this case, the application originally identified the goods and/or services as follows:  “Collagen used as a raw ingredient in the manufacture of cosmetics.”

 

However, the proposed amendment identifies the following goods and/or services:  “Vegan Rose Collagen Dietary Supplement.”  

 

This proposed amendment is beyond the scope of the original identification because it is not a raw ingredient in the manufacture of cosmetics, it identifies altogether different goods, namely, dietary supplments.  

 

This requirement is therefore maintained and made FINAL.  Applicant must either explicitly adopt the original identification or amend the identification to clarify or limit the original goods without broadening or expanding the goods beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See TMEP §1402.07(e).

 

SPECIMEN – FINAL

 

In the initial Office Action dated March 5, 2020, registration was refused because the specimen did not show the applied-for mark as actually used in commerce in connection with any of the goods specified in International Class 1.  Specifically, the specimens showed use of the mark with a vegan collagen dietary supplements.  However, the goods as identified in the application were “collagen used as a raw ingredient in the manufacture of cosmetics.”  The specimens did not show use for such goods.  Applicant’s proposed voluntary amendment to change the identification to “Vegan Collagen Dietary Supplement which includes vitamin C, Biotin, Iron, Zinc, Theanine, Monk Fruit, and Water-soluble dietary fiber” was unacceptable as beyond the scope of the goods originally identified, and therefore the original identification remained operative.

 

Specimen does not show use in specific class(es).  Registration is refused as FINAL because neither the original or substitute specimen show the applied-for mark as actually used in commerce in connection with any of the goods specified in International Class(es) 1.  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 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); see In re Gulf Coast Nutritionals, Inc., 106 USPQ2d 1243, 1247 (TTAB 2013). 

 

Specifically, the substitute specimens again show use of the mark with a vegan collagen dietary supplements.  However, the goods are identified in the application as “collagen used as a raw ingredient in the manufacture of cosmetics.”  The specimens do not show use for these goods.  As stated previously applicant’s proposed amendments to the identification of goods are unacceptable as beyond the scope with the original identification in the application remaining operative.

 

Additionally, in addition to the foregoing, the substitute specimen lacks the required URL and/or date printed/accessed.  See 37 C.F.R. §2.56(c); Mandatory Electronic Filing & Specimen Requirements, Examination Guide 1-20, at V.B. (Rev. Feb. 2020).  A webpage submitted as a specimen must include the URL and access or print date to show actual use in commerce.  37 C.F.R. §2.56(c).  Because the webpage specimen lacks the associated URL and/or access or print date on it, within the TEAS form used to submit the specimen, or in a verified statement in a later-filed response, it is unacceptable to show use of the mark in commerce. 

 

Accordingly, for reasons stated herein and in the prior Office Action, the refusal to register the applied-for mark in International Class(es) 1 is now made final because applicant failed to provide evidence of use of the mark in commerce.

 

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, 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).

 

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.

 

For the foregoing reasons and those stated in the prior Office Action, the meaning/significance, applicant/entity, identification of goods/scope requirements and specimen refusal are each maintained and made FINAL.

.

 

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).

 

Please feel free to contact the undersigned attorney if you wish to discuss this application.

 

/John S. Yard/

John S. Yard

Examining Attorney

Law Office 115

(571)272-9486

john.yard@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on May 11, 2020 for

U.S. Trademark Application Serial No. 88706533

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/John S. Yard/

John S. Yard

Examining Attorney

Law Office 115

(571)272-9486

john.yard@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from May 11, 2020, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”