To: | HRL Laboratories, LLC (mel@hkylelaw.com) |
Subject: | U.S. Trademark Application Serial No. 88801655 - HRL ADDITIVE - N/A |
Sent: | June 09, 2020 05:48:38 PM |
Sent As: | ecom107@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88801655
Mark: HRL ADDITIVE
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Correspondence Address:
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Applicant: HRL Laboratories, LLC
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Reference/Docket No. N/A
Correspondence Email Address: |
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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: June 09, 2020
This Office action is in reply to applicant’s Response filed on May 14, 2020.
In the first Office action, dated May 12, 2020, the following issues were raised:
(1) Refusal Under Sections 1 and 45: Specimen Refusal
(2) Disclaimer Required
On May 14, 2020, applicant filed a response in which (1) applicant submitted a substitute specimen; and (2) applicant entered into the record the required disclaimer statement. However, the substitute specimen was not properly verified.
Based on applicant’s response and amendments,
(1) the specimen refusal is now made FINAL; and
(2) the requirement to provide a disclaimer statement has been satisfied and is accordingly WITHDRAWN.
See 15 U.S.C. §1052, 1127; 37 C.F.R. §2.63(b); TMEP §§713.02, 714.04.
Summary of Issues Made Final that applicant must address:
Refusal Under Sections 1 and 45: Specimen Refusal
Applicant was previously refused registration and required to submit a verified substitute specimen to show use of the applied-for mark in commerce because the original specimen merely showed use of the applied-for mark in connection with shipping and packaging material and therefore failed to evidence trademark usage of applicant’s mark. In response to the refusal, applicant provided a substitute specimen that appears to show use of the applied-for mark in commerce but is not verified. The USPTO does not accept materials submitted as specimens without proper verification. See 37 C.F.R. §§2.34(a)(1), 2.59(a)-(b)(1), 2.76(b)(2); In re Adair, 45 USPQ2d 1211, 1212 n.2 (TTAB 1997).
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 final specimen refusal by satisfying one of the following for each applicable international class:
(1) Submit a verification of the previously submitted substitute specimen, attesting that it 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. 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) Submit a different and properly verified specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application and (b) shows the mark in actual use in commerce for the goods identified in the application. The substitute specimen cannot be accepted without the verified statement referenced in (1).
(3) Amend the filing basis to intent to use under Section 1(b), 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.
Comments
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).
/Troy Knight/
Examining Attorney
Law Office 107
U.S. Patent and Trademark Office
(571) 270-3151
Troy.Knight@USPTO.GOV
RESPONSE GUIDANCE