To: | MSCHF PRODUCT STUDIO, INC (stephen@smcarthurlaw.com) |
Subject: | U.S. Trademark Application Serial No. 88719395 - MSCHF - N/A |
Sent: | March 12, 2020 01:09:26 PM |
Sent As: | ecom119@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88719395
Mark: MSCHF
|
|
Correspondence Address: |
|
Applicant: MSCHF PRODUCT STUDIO, INC
|
|
Reference/Docket No. N/A
Correspondence Email Address: |
|
PRIORITY ACTION
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: March 12, 2020
USPTO database searched; 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.
Applicant must address issues shown below. On March 12, 2020, the examining attorney and Stephen MacArthur discussed the issues below. Applicant must timely respond to these issues. See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §708.05.
When determining whether a mark is used in connection with the services in the application, a key consideration is the perception of the user. In re JobDiva, Inc., 843 F.3d 936, 942, 121 USPQ2d 1122, 1126 (Fed. Cir. 2016) (citing Lens.com, Inc. v. 1-800 Contacts, Inc., 686 F.3d 1376, 1381-82, 103 USPQ2d 1672, 1676 (Fed Cir. 2012)). A specimen must show the mark used in a way that would create in the minds of potential consumers a sufficient nexus or direct association between the mark and the services being offered. See 37 C.F.R. §2.56(b)(2); In re Universal Oil Prods. Co., 476 F.2d 653, 655, 177 USPQ2d 456, 457 (C.C.P.A. 1973); TMEP §1301.04(f)(ii).
To show a direct association, specimens consisting of advertising or promotional materials must (1) explicitly reference the services and (2) show the mark used to identify the services and their source. In re The Cardio Grp., LLC, 2019 USPQ2d 227232, at *2 (TTAB 2019) (quoting In re WAY Media, LLC, 118 USPQ2d 1697, 1698 (TTAB 2016)); TMEP §1301.04(f)(ii). Although the exact nature of the services does not need to be specified in the specimen, there must be something which creates in the mind of the purchaser an association between the mark and the services. In re Adair, 45 USPQ2d 1211, 1215 (TTAB 1997) (quoting In re Johnson Controls Inc., 33 USPQ2d 1318, 1320 (TTAB 1994)).
In the present case, the specimen in one instance failed to attach and the record shows “no image attached” and thus cannot be considered. The second specimen shows a font page “Made by MSCHF” which does not show a direct association between the mark and services in that it merely marks a product. Nothing associates that particular good, whether it be a rubber chicken or a page of fonts, with a store or other online web service.
Examples of specimens. 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)(2), (c); TMEP §1301.04(a), (h)(iv)(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 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.
How to submit a verified specimen.
After opening the appropriate TEAS response form, answer “Yes” to form wizard question #2, click “Continue,” and provide the following for each relevant class for which a specimen is being submitted:
(1) Under the heading “Classification and Listing of Goods/Services/Collective Membership Organization,” check the box next to the following statement: “Check here to modify the current classification number; listing of goods/services/the nature of the collective membership organization; dates of use; and/or filing basis; or to submit a substitute specimen, a foreign registration certificate, or proof of renewal of a foreign registration. If not checked, the changes will be ignored.”;
(2) Attach specimen under “Specimen File” (attachment may not exceed 5 megabytes);
(3) Describe in the box below that location what the attached specimen consists of;
(4) Check the box below the specimen description next to the following statement (to ensure that the declaration language is inserted into the form): “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” [for an application based on Section 1(a), Use in Commerce] OR “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use” [for an application based on Section 1(b) Intent-to-Use].; and
(5) Follow the instructions within the form for signing. The form will require two signatures: one in the “Declaration Signature” section and one in the “Response Signature” section.
IDENTIFICATION OF SERVICES
The identification of services is indefinite as specified further below and must be clarified. See TMEP §1402.01. 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 at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.
An applicant may only amend an identification to clarify or limit the goods or services, but not to add to or broaden the scope of the goods or services. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.
The following recitations are NOT acceptable for the reasons annotated:
The scope of the “novelty and humorous goods” being sold by the store is not sufficiently specific and fails to define a clear commercial scope for a store service. Hence, the identification is indefinite and must be clarified because the wording is unclassifiable. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. See, in the Manual
035 Gift and sundries retail store services located in hotels
035 Retail shops featuring {indicate specific field, e.g. gifts, flowers, baked goods}
028 Novelty toy items in the nature of {indicate type of toy item, e.g., artificial plush animal tails, etc.}
035 Retail store services featuring a wide variety of consumer goods of others
Applicant must amend the identification to specify the common commercial or generic name of the goods or services. See TMEP §1402.01. If the goods or services have no common commercial or generic name, applicant must describe or explain the nature of the goods or services using clear and succinct language. See id.
· online store featuring humorous downloadable software and non-downloadable software;
A store service is in the nature of providing a marketplace for the goods for the convenience of a consumer to locate goods in a single place, and hence if the software is applicant’s own, the activity of providing “downloadable” software is proprietary, and hence, potential not a service at all, but a sale of an actual good. Hence, the identification is indefinite and must be clarified because the wording is unclassifiable. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. See, in the Manual
035 Operating on-line marketplaces for sellers and buyers of goods and/or services
035 Computerized on-line ordering services in the field of vibrational energy healing services
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. See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1402.03(d).
The following are examples of acceptable identifications in International Class 9: “recorded desktop publishing software” and “downloadable mobile applications for managing bank accounts.” Additionally, the following are acceptable identifications in International Class 41: “providing online non-downloadable game software” and “providing temporary use of non-downloadable game software.” Finally, the following are acceptable identifications in International Class 42: “providing temporary use of on-line non-downloadable software development tools” and “providing temporary use of non-downloadable cloud-based software for calculating energy costs.”
Applicant must amend the identification to specify the common commercial or generic name of the goods or services. See TMEP §1402.01. If the goods or services have no common commercial or generic name, applicant must describe or explain the nature of the goods or services using clear and succinct language. See id.
The wording must be amended to correct minor misspellings but is otherwise definite.
· providing a website featuring novelty and humorous goods for sale and software for download;
The identification is ambiguous and in part misclassified and fails to identify a service for downloadable software. See above discussion regarding software sold as a service and a good, and operation of retail marketplace and store services. A download of software is deemed a classifiable good, not a service. If the service of providing a marketplace for software of others is provided, then the service is misclassified and must be moved to Class 35. Hence, the identification is indefinite and must be clarified because the wording is unclassifiable. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. See, in the Manual
035 Providing a searchable website featuring the goods and services of other vendors
035 Providing a website featuring an online marketplace for exchanging goods and services with other users
Applicant must amend the identification to specify the common commercial or generic name of the goods or services. See TMEP §1402.01. If the goods or services have no common commercial or generic name, applicant must describe or explain the nature of the goods or services using clear and succinct language. See id.
The identification is ambiguous and in part misclassified and fails to identify a service. See above discussion regarding software sold as a service and a good, and operation of retail marketplace and store services. A download of software is deemed a classifiable good, not a service. If the service of providing a marketplace for software of others is provided, then the service is misclassified and must be moved to Class 35. Hence, the identification is indefinite and must be clarified because the wording is unclassifiable. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Applicant may adopt the following identification, if accurate:
Online retail store services featuring novelty and humorous gifts; online store featuring humorous downloadable software and recorded non-downloadable software for playing games; online retail store featuring a wide variety of novelty and humorous goods and software; online retail stores selling shoes, rubber chickens, and pipes; providing online ordering services via a website featuring novelty and humorous gifts and game software for download; in INT. CLASS 035
Providing humorous websites that offer entertainment, namely, in the nature of providing sexually-oriented, joke-oriented, and insult-oriented content, in INT. CLASS 041;
Providing humorous websites that offer software, namely, software as a service (SAAS) services featuring software for writing and cataloging jokes in entertainment industry jobs, in Class 42.
MULTI-CLASS APPLICATION
(1) List the goods and/or services 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 and/or services based on use in commerce that are classified in at least 3 classes; however, applicant submitted a fee(s) sufficient for only 2 class(es). Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees 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 not acceptable for any international class. See more information about specimens.
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)(2), (c); TMEP §1301.04(a), (h)(iv)(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).
(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 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).
For 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, see the Multiple-class Application webpage.
The fee for adding classes to a TEAS Standard application is $275 per class. See 37 C.F.R. §2.6(a)(1)(iii). For more information about adding classes to an application, see the Multiple-class Application webpage.
How to respond. Click to file a response to this nonfinal Office action.
/Hanno Rittner/
Examining Attorney
Law Office 119
hanno.rittner@uspto.gov
571-272-7188
RESPONSE GUIDANCE