To: | Michael Girgenti (claymcgurk@gmail.com) |
Subject: | U.S. Trademark Application Serial No. 88864794 - LOOK FOR THE STAR - N/A |
Sent: | June 22, 2021 08:27:54 AM |
Sent As: | ecom103@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88864794
Mark: LOOK FOR THE STAR
|
|
Correspondence Address:
|
|
Applicant: Michael Girgenti
|
|
Reference/Docket No. N/A
Correspondence Email Address: |
|
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 22, 2021
INTRODUCTION
This Office action is in response to applicant’s communication filed on January 28, 2021.
In a previous Office action(s) dated January 4, 2021, the trademark examining attorney refused registration of the applied-for mark based on the following: failure to show the applied-for mark in use in commerce with any of the specified goods.
The following is a SUMMARY OF ISSUES that applicant must address:
• NEW ISSUE: Sections 1, 2, and 45 Refusal – Failure to Function as a Trademark
SECTIONS 1, 2, AND 45 REFUSAL – FAILURE TO FUNCTION AS A TRADEMARK
Thus, the refusal to register the applied-for mark in International Class(es) 16 is MAINTAINED and CONTINUED 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).
Registration is refused because the applied-for mark, as used on the specimen of record, does not function as a trademark to indicate the source of applicant’s goods and to identify and distinguish them from others. Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§1051-1052, 1127; see In re Phoseon Tech., Inc., 103 USPQ2d 1822, 1827-28 (TTAB 2012); In re Remington Prods., Inc., 3 USPQ2d 1714, 1715 (TTAB 1987); TMEP §§904.07(b); 1202 et seq.
The applied-for mark, as shown on the specimen, does not function as a trademark because the commercial impression of LOOK FOR THE STAR, as it is displayed on the substitute specimen, is not that of a trademark. Specifically, the proposed mark appears after a sentence which directs consumers to purchase the product. It does not appear in a location where trademarks are normally placed in an electronic display. Moreover, the size of the proposed mark in comparison to some of the other wording on the webpage, i.e., “STRAWBERRY PENCIL MAGIC” and “Spellsuriffany and Spook Goblin”, further supports the assertion that consumers are unlikely to perceive the applied-for mark, LOOK FOR THE STAR, as a source indicator for applicant’s goods.
Response option. Applicant may respond to this refusal by submitting a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce prior to the expiration of the deadline for filing the statement of use and (b) shows proper trademark use for the goods in the statement of 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 prior to expiration of the filing deadline for filing a statement of use.” The substitute specimen cannot be accepted without this statement.
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).
Applicant may not withdraw the statement of use. 37 C.F.R. §2.88(f); TMEP §1109.17.
For more information about this response option and instructions on how to submit a different specimen using the online Trademark Electronic Application System (TEAS) form, see the Specimen webpage.
How to respond. Click to file a response to this nonfinal Office action.
/Chioma (Bata) Oputa/
Examining Attorney
Law Office 103
571-272-5234
chioma.oputa@uspto.gov
RESPONSE GUIDANCE