To: | Teva Pharmaceutical Industries Limited (trademarks.trademarks@tevapharm.com) |
Subject: | U.S. Trademark Application Serial No. 88749354 - TEVA - N/A |
Sent: | December 23, 2020 01:52:14 PM |
Sent As: | ecom128@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88749354
Mark: TEVA
|
|
Correspondence Address: TEVA PHARMACEUTICALS USA, INC.
|
|
Applicant: Teva Pharmaceutical Industries Limited
|
|
Reference/Docket No. N/A
Correspondence Email Address: |
|
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: December 23, 2020
This Office action is in response to applicant’s communication filed on November 11, 2020.
In a previous Office action(s) dated October 26, 2020, the trademark examining attorney refused registration of the applied-for mark based on the following: failure to show the applied-for mark in use in commerce with any of the specified goods.
Further, the trademark examining attorney maintains and now makes FINAL the refusal in the summary of issues below. See 37 C.F.R. §2.63(b); TMEP §714.04.
SUMMARY OF ISSUES MADE FINAL that applicant must address:
SPECIMEN REFUSAL
In the October 26, 2020 Office action, the specimen was refused because it failed to show the mark used in commerce in association with the identified goods. Applicant submitted arguments in response to this refusal, which are unpersuasive for the reasons discussed immediately below. Accordingly, the specimen refusal is hereby made FINAL.
Material used only to conduct internal business is not an acceptable specimen. Registration is refused because the specimen is merely material used by applicant to conduct its internal business and does not show the applied-for mark as actually used in commerce for 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); TMEP §§904, 904.04(b), 904.07(a). 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 statement of 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).
Material used by an applicant only to conduct its internal business is not an acceptable specimen for goods. See 37 C.F.R. §2.56(a); In re Chi. Rawhide Mfg. Co., 455 F.2d 563, 565, 173 USPQ 8, 9 (C.C.P.A. 1972); In re Bright of Am., Inc., 205 USPQ 63, 71 (TTAB 1979); TMEP §904.04(b). “These materials include all documents whose sole function is to carry out the applicant’s business dealings, such as invoices, bill heads, waybills, warranties, and business stationery.” TMEP §904.04(b); see e.g., In re Chi. Rawhide Mfg. Co., 455 F.2d at 565, 173 USPQ at 9; In re Bright of Am., Inc., 205 USPQ at 65.
Specifically, the specimen consists of an invoice for the goods, which, as discussed above, is considered to be an internal business document because its sole purpose is to carry out the applicant’s business dealings. In applicant’s October 26, 2020 response, applicant argues that the invoice is not an internal business document because the invoice is addressed to a third-party. However, as the discussion above shows, invoices, even those directed to third-parties, serve the sole function of carrying out the applicant’s business activities. Therefore, generally, invoices are unacceptable as specimens for goods.
Applicant should note that invoices may be acceptable as a specimen for goods in the situation where it is impracticable to place the mark on the goods. Such situation may be found when goods such as natural gas or grain are sold in bulk or when chemicals are only transported in tanker cars. TMEP §904.03(k). However, the mere assertion of impracticability is not sufficient to show that it is impracticable to place the mark on goods. Id. Applicant must establish for the record that the goods are of such nature. Id.
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 on the specimen itself, within the TEAS form that submits the specimen, or in a verified statement under 37 C.F.R. §2.20 or 28 U.S.C. §1746 in a later-filed response. See 37 C.F.R. §2.56(c); TMEP §§904.03(i), 1301.04(a).
Response option. Applicant may respond to this refusal by submitting, for each applicable international class, a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce prior to the expiration of the deadline for filing the statement of use and (b) shows the mark in actual use in commerce for the goods identified in the statement of 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 prior to expiration of the filing deadline for filing a statement of use.” The substitute specimen cannot be accepted without this statement.
Applicant may not withdraw the statement of use. See 37 C.F.R. §2.88(f); TMEP §1109.17.
For an overview of this response option and instructions on how to submit a different specimen using the online Trademark Electronic Application System (TEAS) form, see the Specimen webpage.
ASSISTANCE
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 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).
/Bridget Watson/
Bridget Watson
Examining Attorney
Law Office 128
(571) 272-7163
bridget.watson@uspto.gov
RESPONSE GUIDANCE