To: | REDSAIL TECHNOLOGIES, LLC (tmoses@seiplaw.com) |
Subject: | U.S. Trademark Application Serial No. 88858275 - REDSAIL TECHNOLOGIES - SMT-052 - Request for Reconsideration Denied - No Appeal Filed |
Sent: | August 31, 2020 11:46:49 AM |
Sent As: | ecom115@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88858275
Mark: REDSAIL TECHNOLOGIES
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Correspondence Address: |
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Applicant: REDSAIL TECHNOLOGIES, LLC
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Reference/Docket No. SMT-052
Correspondence Email Address: |
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REQUEST FOR RECONSIDERATION
AFTER FINAL ACTION
DENIED
Issue date: August 31, 2020
The specimen refusal made final in the office action dated July 24, 2020 and continued in the August 19, 2020 denial of reconsideration is maintained and continued. See TMEP §§715.03(a)(ii)(B), 715.04(a).
Webpage specimens do not include required URL. Applicant was previously refused registration because the specimens did not include the required URL, which is required to show actual use in commerce. Response options were set forth in the July 24, 2020 final action and August 19, 2020 denial of reconsideration. The August 20, 2020 substitute specimen does not show proper use of the applied-for mark in commerce for the reasons immediately stated below.
Registration is again refused because the substitute specimen submitted on August 20, 2020 is not acceptable as a webpage specimen; it lacks the required URL. See 37 C.F.R. §2.56(c); Mandatory Electronic Filing & Specimen Requirements, Examination Guide 1-20, at V.B. (Rev. Feb. 2020). The specimen thus appears to be in the nature of a digital mockup that fails to show the applied-for mark in actual use in commerce. See 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, 904.03(g), 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 and services 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).
To show actual use in commerce, a webpage specimen must include both: (1) the full URL, and (2) access or print date. 37 C.F.R. §2.56(c). Because the webpage specimen lacks the URL on it or within the TEAS form used to submit the specimen, it is unacceptable to show use of the mark in commerce.
Applicant is encouraged to carefully review the instructions for submitting a substitute specimen (or the URL of the previously submitted specimen) prior to responding to this notice.
Response options. Applicant may respond to this refusal by satisfying one of the following for each applicable international class:
(1) Submit a verified statement, in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20 or 28 U.S.C. §1746, specifying the URL of the original webpage specimen and the date it was accessed or printed.
(2) Submit a different specimen (a verified “substitute” specimen), including the URL and date accessed/printed on it, 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 and/or services identified in the application or amendment to allege use. Applicant must also submit 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.”
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).
(3) 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.
If applicant has already filed an appeal with the Trademark Trial and Appeal Board, the Board will be notified to resume the appeal. See TMEP §715.04(a).
If applicant has not filed an appeal and time remains in the six-month response period, applicant has the remainder of that time to (1) file another request for reconsideration that complies with and/or overcomes any outstanding final requirement(s) and/or refusal(s), and/or (2) file a notice of appeal to the Board. TMEP §715.03(a)(ii)(B). Filing a request for reconsideration does not stay or extend the time for filing an appeal. 37 C.F.R. §2.63(b)(3); see TMEP §715.03(c).
/April Roach/
April Roach
Examining Attorney
Law Office 115
571-272-1092
April.Roach@uspto.gov