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:  March 21, 2022

 

INTRODUCTION

 

This Office action is in response to applicant’s request to divide dated November 17, 2021 and response communication filed on November 24, 2021.

 

In previous Office actions dated April 28, 2020, March 11, 2021, and October 25, 2021, the trademark examining attorney refused registration of the applied-for mark based on the following:  Trademark Act Section 2(e)(1) merely descriptive refusal.  In addition, applicant was required to satisfy the following requirements:  amend the identification of goods and services – partial requirement, multiple-class application requirements – insufficient fees, and request for information.

 

Based on applicant’s request to divide dated November 17, 2021 and response communication filed on November 24, 2021, the trademark examining attorney notes that the following requirement has been satisfied: identification of goods and services – partial requirement.  See TMEP §§713.02, 714.04. 

 

The following refusal has also been obviated:  sufficient amendment to the Supplemental Register in response to Section 2(e) refusal.  See TMEP §§713.02, 714.04. 

 

In addition, the following requirements have been withdrawn:  multiple-class application requirements – insufficient fees, request for information.  See TMEP §§713.02, 714.04. 

 

Further, the trademark examining attorney maintains and now makes FINAL the refusal in the summary of the issue below.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

All arguments and evidence included in the April 28, 2020, March 11, 2021, and October 25, 2021 Office actions are incorporated herein by reference.

 

SUMMARY OF THE ISSUE MADE FINAL that applicant must address:

• Specimen Refusal – Final 

 

SPECIMEN REFUSAL – FINAL

  

Applicant was previously refused registration in International Classes 7 and 37 because: (i) the specimen appeared to be mere advertising and did not properly show the applied-for mark as actually used in commerce in International Class 7, and (ii) the specimen did not show a direct association between the mark and the services and failed to show the applied-for mark as actually used in commerce with the identified services in International Class 37. See Office actions dated April 28, 2020 and March 11, 2021. Response options for overcoming that refusal were set forth in the prior Office actions. Per applicant’s response communication dated September 17, 2021, applicant obviated the specimen refusal via amendment of International Classes 7 and 37 to intent to use under Section 1(b) filing basis. See petition to revive abandoned application dated September 17, 2021. Following applicant’s request to divide dated November 17, 2021 and response communication filed on November 24, 2021, the International Class 7 goods have been properly reclassified in International Class 6 and amended to intent to use under Section 1(a) filing basis, International Class 37 of the application has been re-amended to use under Section 1(a) filing basis, and specimens for International Class 6 and substitute specimens for International Class 37 have been provided. See request to divide dated November 17, 2021 and response communication filed on November 24, 2021. Applicant, however, submitted specimens for International Class 6 and substitute specimens for International Class 37 that do not show proper use of the applied-for mark in commerce for the reasons immediately stated below. 

 

Thus, the refusal to register the applied-for mark in International Classes 6 and 37 is now made final because applicant failed to provide evidence of use of the mark in commerce.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a), 2.63(b); TMEP §§904, 904.07, 1301.04(g)(i).

 

International Class 6:

 

Specimen is not an acceptable webpage display for International Class 6.  Registration remains refused because the specimen in International Class 6 is not acceptable as a display associated with the goods and does not show the applied-for mark as actually used in commerce.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §2.56(a), (b)(1); see TMEP §§904, 904.03(g)-(i), 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). 

 

A webpage or catalog display specimen (1) must show use of the mark directly associated with the goods and (2) such use must be of a point-of-sale nature.  37 C.F.R. §2.56(b)(1).  This means that this type of display specimen must include the following:

 

(1)        A picture or sufficient textual description of the goods;

(2)        The mark associated with the goods; and

(3)        A means for ordering the goods such as a “shopping cart” button/link, an order form, or a telephone number for placing orders. 

 

See In re Sones, 590 F.3d 1282, 1286-89, 93 USPQ2d 1118, 1122-24 (Fed. Cir. 2009); In re Azteca Sys., Inc., 102 USPQ2d 1955, 1957-58 (TTAB 2012); In re Dell Inc., 71 USPQ2d 1725, 1727 (TTAB 2004); Lands’ End v. Manbeck, 797 F. Supp. 511, 514, 24 USPQ2d 1314, 1316 (E.D. Va. 1992); TMEP §904.03(h), (i)-.03(i)(D). 

 

In this case, the specimen broadly references wind turbine support structures and features what appears to be an image of a wind turbine support structure (see specimens dated November 24, 2021 at pages 1-2, 4-5, and 7-8), however the specimen does not show sufficient means for ordering the goods.  Specifically, the specimen omits any indicators of the ability to buy the goods via the webpage, such as: a sales order form to place an order, an online process to accept an order, such as "shopping cart" functionality, or special instructions on how to order; information on minimum quantities; indication of methods of payment; information about shipment of the goods; and/or means of contacting the applicant to place an order. See specimens dated November 24, 2021; see TMEP §904.03(i)(C). 

 

Accordingly, such material is mere advertising, which 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). 

 

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).  As specified above, 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).

 

International Class 37:

 

Specimen does not show direct association between mark and International Class 37 services.  Registration remains refused as to International Classes 37 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.  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 webpage specimens provided merely, broadly indicate that applicant is “an innovative technology and services provider to the offshore wind industry” featuring “naval architects, engineers, innovators, and entrepreneurs who are passionate about unlocking the full potential of the ocean to provide clean, inexhaustible energy to the world.” In addition, the webpage specimens feature language regarding applicant’s “floating support structure [goods] for offshore wind turbines” and broadly reference “site development around the globe,” products “installed,” and products “under design contract.” See specimens dated November 24, 2021 at pages 1-2, 4-5, and 7-8. Further, the webpage screenshot from what appears to be applicant’s YouTube page merely features the applied-for mark in connection with what appears to be applicant’s house mark, PRINCIPLE POWER, and the broad language “new era, new brand.” See specimens dated November 24, 2021 at pages 3, 6, and 9. However, on the basis of the webpage content provided, it appears that applicant offers architecture, engineering, installation, design, and/or retail of of wind turbine support structure goods in connection with the applied-for mark, and/or entrepreneurial services related thereto. However, the specimens do not also clearly reference the rendering of 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, and/or construction planning, such that a direct association is made in the mind of the purchaser between the applied-for mark and applicant’s recited International Class 37 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 Class 37. The specimen therefore remains refused, as to International Class 37.

 

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 retain amendment on the Supplemental Register and be 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.

 

ASSISTANCE

 

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 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).

 

 

/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 21, 2022 for

U.S. Trademark Application Serial No. 88781315

 

A USPTO examining attorney has reviewed your trademark application and issued an Office action.  You must respond to this Office action in order to avoid your application abandoning.  Follow the steps below.

 

(1)  Read the Office action.  This email is NOT the Office action.

 

(2)  Respond to the Office action by the deadline using the Trademark Electronic Application System (TEAS).  Your response must be received by the USPTO on or before 11:59 p.m. Eastern Time of the last day of the response period.  Otherwise, your application will be abandoned.  See the Office action itself regarding how to respond.

 

(3)  Direct general questions about using USPTO electronic forms, the USPTO website, the application process, the status of your application, and whether there are outstanding deadlines to the Trademark Assistance Center (TAC).

 

After reading the Office action, address any question(s) regarding the specific content to the USPTO examining attorney identified in the Office action.

 

 

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 to ensure you receive important USPTO notices about your application.

 

·         Beware of trademark-related scams.  Protect yourself from people and companies that may try to take financial advantage of you.  Private companies may call you and pretend to be the USPTO or may send you communications that resemble official USPTO documents to trick you.  We will never request your credit card number or social security number over the phone.  And all official USPTO correspondence will only be emailed from the domain “@uspto.gov.”  Verify the correspondence originated from us by using your Serial Number in our database, TSDR, to confirm that it appears under the “Documents” tab, or contact the Trademark Assistance Center.

 

·         Hiring a U.S.-licensed attorney.  If you do not have an attorney and are not required to have one under the trademark rules, we encourage you to hire a U.S.-licensed attorney specializing in trademark law to help guide you through the registration process.  The USPTO examining attorney is not your attorney and cannot give you legal advice, but rather works for and represents the USPTO in trademark matters.