Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

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 11, 2021

 

INTRODUCTION

 

This Office action is supplemental to and supersedes the previous Office action issued on April 28, 2020 in connection with this application.  Based on information and/or documentation in applicant’s response, the trademark examining attorney now issues the following new requirement:  request for information.  See TMEP §§706, 711.02. 

 

In a previous Office action dated April 28, 2020, the trademark examining attorney refused registration of the applied-for mark based on the following:  Trademark Act Section 2(e)(1) merely descriptive refusal, specimen refusal – partial refusal.  In addition, applicant was required to satisfy the following requirements:  amend the identification of goods and services, meet all multiple-class application requirements.

 

All arguments and evidence included in the April 28, 2020 Office action are incorporated herein by reference.

 

The following is a SUMMARY OF ISSUES that applicant must address:

• Section 2(e)(1) Merely Descriptive Refusal
• Specimen Refusal – Partial Refusal
• Identification of Goods and Services – Partial Requirement
• Multiple-Class Application Requirements
• Request for Information

 

Applicant must respond to all issues raised in this Office action and the previous April 28, 2020 Office action, within six (6) months of the date of issuance of this Office action.  37 C.F.R. §2.62(a); see TMEP §711.02.  If applicant does not respond within this time limit, the application will be abandoned.  37 C.F.R. §2.65(a).

 

SECTION 2(E)(1) MERELY DESCRIPTIVE REFUSAL

 

Registration is refused because the applied-for mark merely describes a feature, purpose, or use of applicant’s goods and services.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.

 

A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s goods and services.  TMEP §1209.01(b); see, e.g., In re TriVita, Inc., 783 F.3d 872, 874, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005) (citing Estate of P.D. Beckwith, Inc. v. Comm’r of Patents, 252 U.S. 538, 543 (1920)). 

 

The determination of whether a mark is merely descriptive is made in relation to an applicant’s goods and services, not in the abstract.  DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012); In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); TMEP §1209.01(b).  “Whether consumers could guess what the product [or service] is from consideration of the mark alone is not the test.”  In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).

 

Applicant’s mark is GLOBALIZING FLOATING WIND for “Wind turbines and structural parts therefor; wind turbine support structures; wind turbine platforms” in International Class 7, “Construction of wind farms, wind turbines, wind turbine platforms, and wind turbine support structures; maintenance services for wind farms, wind turbines, wind turbine platforms, and wind turbine support structures; construction consultation; construction planning” in International Class 37, “Generation of electrical power; Consulting services in the field of wind energy production” in International Class 40, and “Design and development of wind farms, wind turbines, wind turbine platforms, and wind turbine support structures” in International Class 42.   

 

The wording GLOBALIZING FLOATING WIND merely describes a feature, purpose, or use of applicant’s goods and services, namely, that applicant offers goods and services related to offshore wind turbines that are worldwide in scope or application.

 

The previously attached evidence from The American Heritage Dictionary shows that the wording “GLOBALIZE” means “to make global or worldwide in scope or application.” The previously attached evidence from Merriam-Webster shows that the wording “FLOATING” means “buoyed on or in a fluid.” The previously attached evidence from Merriam-Webster shows that the wording “WIND” means “a natural movement of air of any velocity.” The previously attached evidence from Wikipedia also establishes that “a floating wind turbine is an offshore wind turbine mounted on a floating structure that allows the turbine to generate electricity in water depths where fixed-foundation turbines are not feasible.” See previously attached evidence. Thus, the collective wording GLOBALIZING FLOATING WIND merely describes that goods and services related to offshore wind turbines that are worldwide in scope or application. 

 

When used in a mark for goods or services, the wording GLOBAL is often merely descriptive and indicates that the manufacturer or service provider is located internationally, offers the goods or services internationally, and/or advertises the goods or services internationally.  The previously attached third-party registration evidence also provides examples of the common descriptive use of the word GLOBAL in marks for energy-related goods and services. See attached Reg. Nos. 2748044, 5681072, 5119963, 5393832, and 4148448.

 

The examining attorney also notes that applicant expressly offers “wind turbines and structural parts therefor,” “wind turbine support structures,” wind turbine platforms,” “construction of wind farms, wind turbines, wind turbine platforms, and wind turbine support structures,” “maintenance services for wind farms, wind turbines, wind turbine platforms, and wind turbine support structures,” “consulting services in the field of wind energy production,” and “design and development of wind farms, wind turbines, wind turbine platforms, and wind turbine support structures” in connection with the applied-for mark. See identification of goods and services. The wording WIND therefore merely describe a feature, purpose, or use of applicant’s goods and services, as set forth in the identification.

 

Further, the previously attached evidence from what appears to be applicant’s website, available at http://www.principlepowerinc.com/, indicates that applicant “is building new partnerships and engaging in site development around the globe to harness the energy and potential of offshore wind” through use of “a floating support structure for offshore wind turbines.” See also, previously attached screenshots.

 

The goods and services offered in connection with the applied-for mark thus appear to be related to FLOATING WIND and offered and/or rendered on a worldwide, or GLOBAL, scale, such that the applied-for wording merely describes a feature, purpose, or use of applicant’s goods and services. 

 

Moreover, the previously attached third-party evidence from QFWE, NREL, Atkins, Popular Mechanics, and Equinor shows that the phrasing FLOATING WIND is commonly used in commerce to energy related goods and services that utilize offshore wind turbines. See attached evidence. The applied-for wording therefore merely describes a feature, purpose, or use of applicant’s goods and services in the context of the applied-for mark.

 

Given the foregoing, taken as a whole, the applied-for mark GLOBALIZING FLOATING WIND  simply identifies the worldwide scope and a feature, purpose, or use of applicant’s goods and services.

 

In addition, in this case, the combination of descriptive terms comprising the applied-for wording does not create a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in relation to the goods and services, as to obviate refusal under Section 2(e)(1).

 

Generally, if the individual components of a mark retain their descriptive meaning in relation to the goods and services, the combination results in a composite mark that is itself descriptive and not registrable.  In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1516 (TTAB 2016) (citing In re Tower Tech, Inc., 64 USPQ2d 1314, 1317-18 (TTAB (2002)); TMEP §1209.03(d); see, e.g., Apollo Med. Extrusion Techs., Inc. v. Med. Extrusion Techs., Inc., 123 USPQ2d 1844, 1851 (TTAB 2017) (holding MEDICAL EXTRUSION TECHNOLOGIES merely descriptive of medical extrusion goods produced by employing medical extrusion technologies).

 

Only where the combination of descriptive terms creates a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in relation to the services is the combined mark registrable.  See In re Colonial Stores, Inc., 394 F.2d 549, 551, 157 USPQ 382, 384 (C.C.P.A. 1968); In re Positec Grp. Ltd., 108 USPQ2d 1161, 1162-63 (TTAB 2013).

 

In this case, both the individual components (i.e., GLOBALIZING, FLOATING, and WIND) and the composite result are descriptive of applicant’s goods and services and do not create a unique, incongruous, or nondescriptive meaning in relation to the goods and services.  Specifically, in relation to applicant’s identified goods and services, the proposed mark GLOBALIZING FLOATING WIND merely describes a feature, purpose, or use of applicant’s goods and services, namely, that applicant offers goods and services related to buoyed, or FLOATING, machines driven by the pressure of air movement being offshore WIND turbines, the aforementioned goods and services being GLOBAL, or worldwide, in scope or application. The composite meaning therefore fails to create a nondescriptive meaning in the context of the applicant’s goods and services, and registration is refused.

 

Per applicant’s response communication dated November 10, 2020, applicant argues that “the double meaning [of the applied-for mark] suggests the mark has unitary character since it carries a nebulous, thought-provoking meaning. Secondly, the word combination of the mark is exclusively used by Applicant.” Such arguments are unpersuasive.

 

A mark is suggestive if some imagination, thought, or perception is needed to understand the nature of the goods and services described in the mark; whereas a descriptive term immediately and directly conveys some information about the goods and services.  See Stoncor Grp., Inc. v. Specialty Coatings, Inc., 759 F.3d 1327, 1332, 111 USPQ2d 1649, 1652 (Fed. Cir. 2014) (citing DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251-52, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012)); TMEP §1209.01(a). In this case, the applied-for mark does not appear to hold a nebulous, thought-provoking double meaning, as contended by applicant, such that the wording does not immediately and directly convey to consumers a feature, purpose, or use of applicant’s goods and services, namely, that applicant offers goods and services related to offshore wind turbines that are worldwide in scope or application.

 

In addition, the fact that an applicant may be the first or only user of a merely descriptive designation does not necessarily render a word or term incongruous or distinctive; as in this case, the evidence shows that GLOBALIZING FLOATING WIND is merely descriptive.  See In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1514 (TTAB 2016); In re Phoseon Tech., Inc., 103 USPQ2d 1822, 1826 (TTAB 2012); TMEP §1209.03(c).

 

For these reasons, the mark is merely descriptive of applicant’s goods and services, and registration of the applied-for mark on the Principal Register is refused.

 

ADVISORY: SUPPLEMENTAL REGISTER RECOMMENDED

 

The applied-for mark has been refused registration on the Principal Register.  Applicant may respond to the refusal by submitting evidence and arguments in support of registration and/or by amending the application to seek registration on the Supplemental Register.  See 15 U.S.C. §1091; 37 C.F.R. §§2.47, 2.75(a); TMEP §§801.02(b), 816.  Amending to the Supplemental Register does not preclude applicant from submitting evidence and arguments against the refusal.  TMEP §816.04.

 

Although registration on the Supplemental Register does not afford all the benefits of registration on the Principal Register, it does provide the following advantages to the registrant:

 

(1)        Use of the registration symbol ® with the registered mark in connection with the designated goods and services, which provides public notice of the registration and potentially deters third parties from using confusingly similar marks.

 

(2)        Inclusion of the registered mark in the USPTO’s database of registered and pending marks, which will (a) make it easier for third parties to find it in trademark search reports, (b) provide public notice of the registration, and thus (c) potentially deter third parties from using confusingly similar marks.

 

(3)        Use of the registration by a USPTO trademark examining attorney as a bar to registering confusingly similar marks in applications filed by third parties.

 

(4)        Use of the registration as a basis to bring suit for trademark infringement in federal court, which, although more costly than state court, means judges with more trademark experience, often faster adjudications, and the opportunity to seek an injunction, actual damages, and attorneys’ fees and costs.

 

(5)        Use of the registration as a filing basis for a trademark application for registration in certain foreign countries, in accordance with international treaties.

 

See 15 U.S.C. §§1052(d), 1091, 1094; J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition §§19:33, 19:37 (rev. 4th ed. Supp. 2017).

 

Applicant should note the following additional ground for refusal.

 

SPECIMEN REFUSAL – PARTIAL REFUSAL

 

THIS PARTIAL REFUSAL APPLIES TO CLASSES 7, 37, AND 40 ONLY

 

Advertising for goods is not an acceptable specimen.  Registration is refused because the specimen appears to be mere advertising and does not properly show the applied-for mark as actually used in commerce in International Class 7.  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 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). 

 

Specifically, applicant submitted a presentation for potential customers that appears to be for marketing purposes. See specimen and specimen description of record.

 

Advertising is not acceptable as a specimen for goods.  See In re Yarnell Ice Cream, LLC, 2019 USPQ2d 265039, at *15-16 (TTAB 2019) (quoting In re Siny Corp., 920 F.3d 1331, 1336, 2019 USPQ2d 127099, at *2-3 (Fed. Cir. 2019)); see also Avakoff v. S. Pac. Co., 765 F.2d 1097, 1098, 226 USPQ 435, 436 (Fed. Cir. 1985); TMEP §904.04(b), (c).  Advertising includes online advertising banners appearing on search-engine results pages or in social media, advertising circulars and brochures, price lists, and business cards.  See TMEP §904.04(b). 

 

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).

 

Specimen does not show direct association between mark and services.  Registration is further refused as to International Classes 37 and 40 because the specimen does not show a direct association between the mark and the services and fails to show the applied-for mark as actually used in commerce with the identified services in International Classes 37 and 40.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a), (b)(2); TMEP §§904, 904.07(a), 1301.04(f)(ii), (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 services identified in the 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). 

 

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 that 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 does not show a direct association between the mark and services in that the presentation content provided does not clearly reference the rendering of construction services, maintenance services, construction consultation and planning, generation of electrical power, and/or consulting services in the field of wind energy production, such that a direct association is made in the mind of the purchaser between the applied-for mark and the recited International Class 37 and 40 services. The specimen thus does not show a direct association between the mark and the services and fails to show the applied-for mark as actually used in commerce with the identified services in International Classes 37 and 40. The specimen is therefore refused, as to International Classes 37 and 40.

 

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 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 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 prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the goods and services identified in the 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 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.  

 

PLEASE NOTE: The application may not simultaneously be amended to seek registration on the Supplemental Register and amended to intent to use under Section 1(b) filing basis.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.  However, if applicant responds to the refusals, applicant must also respond to the requirements set forth below.

 

IDENTIFICATION OF GOODS AND SERVICES – PARTIAL REQUIREMENT

 

THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE GOODS SPECIFIED THEREIN

 

The wordings “wind turbine support structures” and “wind turbine platforms” are classified incorrectly in International Class 7.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b). Further, the wordings must be clarified because they are too broad and could include goods in multiple international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, these wordings could encompass “wind turbine support structures in the nature of pre-fabricated metal architectural columns” and “wind turbine prefabricated metal platforms” in International Class 6 and “wind turbine support structures in the nature of pre-fabricated non-metal architectural columns” and “wind turbine prefabricated platforms not of metal” in International Class 19.

 

Applicant may substitute the following wording, if accurate: 

 

International Class 6:

 

Wind turbine support structures in the nature of pre-fabricated metal architectural columns; wind turbine prefabricated metal platforms

 

International Class 7:

 

Wind turbines and structural parts therefor; wind turbine support structures; wind turbine platforms

 

International Class 19:

 

Wind turbine support structures in the nature of pre-fabricated non-metal architectural columns; wind turbine prefabricated platforms not of metal

 

International Classes 37, 40, and 42 are acceptable as written.

 

Applicant’s goods and 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.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and services or add goods and services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and services will further limit scope, and once goods and services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

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.  See TMEP §1402.04.

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

The application references goods and services based on use in commerce in more than one international class; therefore, applicant must satisfy all the requirements below for each international class:

 

(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 fees already paid (view the USPTO’s current fee schedule).  Specifically, the application identifies goods and services based on use in commerce that are classified in at least 6 (six) classes; however, applicant submitted fees sufficient for only four (4) classes.  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 acceptable for International Class 42; and applicant needs a specimen for International Classes 6, 7, 19, 37, and 40.  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 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).

 

(5)        Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and 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.

 

REQUEST FOR INFORMATION

 

Due to the descriptive nature of the applied-for mark, applicant must provide the following information and documentation regarding the goods and services and wording appearing in the mark: 

 

(1)        Fact sheets, instruction manuals, brochures, advertisements and pertinent screenshots of applicant’s website as it relates to the goods and services in the application, including any materials using the terms in the applied-for mark.  Merely stating that information about the goods and/or services is available on applicant’s website is insufficient to make the information of record.; 

 

(2)        If these materials are unavailable, applicant should submit similar documentation for goods and services of the same type, explaining how its own product or services will differ.  If the goods and services feature new technology and information regarding competing goods and services is not available, applicant must provide a detailed factual description of the goods and services.  Factual information about the goods must make clear how they operate, salient features, and prospective customers and channels of trade.  For services, the factual information must make clear what the services are and how they are rendered, salient features, and prospective customers and channels of trade.  Conclusory statements will not satisfy this requirement.; and

 

(3)        Applicant must respond to the following questions:  Are applicant’s goods and services developed or developing so as to make international influence or operation possible?

 

See 37 C.F.R. §2.61(b); TMEP §§814, 1402.01(e). 

 

Failure to comply with a request for information is grounds for refusing registration.  In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814. 

 

RESPONSE GUIDELINES:

 

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.    

 

 

/Amanda Galbo/

Amanda Galbo

Trademark Examining Attorney

Law Office 125

(571) 272-5391

amanda.galbo@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 March 11, 2021 for

U.S. Trademark Application Serial No. 88781315

 

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. 

 

 

/Amanda Galbo/

Amanda Galbo

Trademark Examining Attorney

Law Office 125

(571) 272-5391

amanda.galbo@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 March 11, 2021, 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.”