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:  June 08, 2020

 

INTRODUCTION

 

This Office action is supplemental to and supersedes the previous Office action issued on May 13, 2020, in connection with this application.  The assigned trademark examining attorney inadvertently omitted a requirement relevant to the mark in the subject application.  See TMEP §§706, 711.02.  Specifically, the name appearing in the applied-for mark appears to be the name of a living individual and thus requires clarification or a consent.

 

The trademark examining attorney apologizes for any inconvenience caused by the delay in raising this issue. 

 

This action also is in response to the applicant’s communication filed on May 26, 2020.

 

In a previous Office action dated May 13, 2020, the trademark examining attorney refused registration of the applied-for mark based on the following:  Trademark Act Sections 1 and 45 for failure to show the applied-for mark in use in commerce with any of the specified goods.  In addition, applicant was required to satisfy the following requirements:  provide clarification regarding the color claim, mark description, and mark drawing in the application, and provide a disclaimer of the descriptive wording in the applied-for mark.

Based on applicant’s response, the trademark examining attorney notes that the following requirements have been satisfied:  color claim and mark description clarified, sufficient mark drawing provided, and disclaimer provided.  See TMEP §§713.02, 714.04. 

 

The issue raised in the previous May 13, 2020, Office action is as follows and is maintained:  specimen fails to show use of the mark in commerce pursuant to Sections 1 and 45 of the Trademark Act. 

 

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

 

•         NEW ISSUE:  Inquiry – Name of Living Individual

•         MAINTAINED:  Sections 1 and 45 Specimen Refusal – Substitute Required

 

Applicant must respond to all issues raised in this Office action and the previous May 13, 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).

 

INQUIRY – NAME OF LIVING INDIVIDUAL

Applicant must clarify whether the name “KING MICHAEL” in the mark identifies a particular living individual.  See 37 C.F.R. §2.61(b); TMEP §§813, 1206.03.  In this case, the application neither specifies whether the name in the mark identifies a particular living individual nor includes a written consent.  See TMEP §§813.01(a)-(b), 1206.04(a), 1206.05.

 

To register a mark that consists of or comprises the name of a particular living individual, including a first name, pseudonym, stage name, or nickname, an applicant must provide a written consent personally signed by the named individual.  15 U.S.C. §1052(c); TMEP §§813, 1206.04(a).  

 

Accordingly, if the name in the mark does not identify a particular living individual, applicant must submit a statement to that effect (e.g., “The name shown in the mark does not identify a particular living individual.”). 

 

However, if the name in the mark does identify a particular living individual, applicant must submit both of the following: 

 

(1)        The following statement:  “The name(s) shown in the mark identifies a living individual(s) whose consent(s) to register is made of record.”  If the name is a pseudonym, stage name, or nickname, applicant must provide the following statement:  “KING MICHAEL identifies _____ {specify actual name in the blank}, a living individual whose consent is of record.”

 

(2)        A written consent, personally signed by the named individual, as follows:  “I, _____ {specify name in the blank}, consent to the use and registration of my name, KING MICHAEL, as a trademark and/or service mark with the USPTO.”

 

For an overview of the requirements for names appearing in marks, and instructions on how to satisfy this requirement using the online Trademark Electronic Application System (TEAS) response form, see the Name/Portrait/Signature of Particular Living Individual in Mark webpage. 

 

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. 

 

Applicant should note the following ground for refusal.

 

SECTIONS 1 AND 45 SPECIMEN REFUSAL – SUBSTITUTE REQUIRED

Applicant was previously refused registration in International Class 6 because the initial specimen did not display the applied-for mark.  Response options for overcoming that refusal were set forth in the prior Office action.  Applicant, however, responded to such refusal by submitting a substitute specimen for the refused international class that does not show proper use of the applied-for mark in commerce for the reasons immediately stated below. 

 

First, as an advisory, the the substitute specimen shows use of the federal registration symbol ® with the applied-for mark.  However, the USPTO records do not show that the mark is registered.  Applicant may not use the federal registration symbol until its mark is registered in the USPTO.  TMEP §§906, 906.03.  After registration, applicant may use this symbol in connection with the specific goods listed in the registration.  Id.

 

Otherwise, registration is refused because the substitute 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 application or 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 substitute specimen does not show any means for ordering the goods.  Specifically, the substitute specimen appears to reflect a webpage upon which are displaying the goods in International Class 6, as well as the applied-for mark.  However, no method of ordering or purchasing the displayed goods are provided. 

 

Accordingly, such material is mere advertising, which is not acceptable as a specimen for goods.  See In re Siny Corp., 920 F.3d 1331, 1336, 2019 USPQ2d 127099, at *2-3 (Fed. Cir. 2019) (citing Powermatics, Inc. v. Globe Roofing Prods. Co., 341 F.2d 127, 130, 144 USPQ 430, 432 (C.C.P.A. 1965)); 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). 

 

Please note, 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 goods 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.  

 

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 and requirement 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. 

 

 

 

Response guidelines.  For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  For a requirement, applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

Because of the legal technicalities and strict deadlines of the trademark application process, applicant is encouraged to hire a private attorney who specializes in trademark matters to assist in this process.  The assigned trademark examining attorney can provide only limited assistance explaining the content of an Office action and the application process.  USPTO staff cannot provide legal advice or statements about an applicant’s legal rights.  TMEP §§705.02, 709.06.  See Hiring a U.S.-licensed trademark attorney for more information. 

 

How to respond.  Click to file a response to this nonfinal Office action.    

 

 

/Jeffrey Oakes/

Trademark Examining Attorney

Law Office 128

U.S. Patent and Trademark Office

(571) 272-8653

Jeffrey.Oakes@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 June 08, 2020 for

U.S. Trademark Application Serial No. 88807353

 

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. 

 

 

Oakes, Jeffrey

/Jeffrey Oakes/

Trademark Examining Attorney

Law Office 128

U.S. Patent and Trademark Office

(571) 272-8653

Jeffrey.Oakes

 

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 June 08, 2020, 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.”