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 14, 2021

 

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on February 15, 2021.

 

In a previous Office action(s) dated July 6, 2020, the trademark examining attorney refused registration of the applied-for mark based on the following: Trademark Act Section 2(e)(1) for being merely descriptive.  Applicant was advised of the Supplemental Register as a response.  Based on applicant’s response on December 21, 2020, the trademark examining attorney issued a subsequent Office action refusing registration for failing to show the applied-for mark in use in commerce with the goods and services listed in the application.  The examiner also noted that applicant’s claim of acquired distinctiveness was not accepted.  The Trademark Act Section 2(e)(1) Refusal and Supplemental Register advisory was continued and maintained. 

 

 

Based on applicant’s response on February 15, 2021, the trademark examining attorney notes that the following refusal is withdrawn:  Trademark Act Section 2(e)(1) Refusal for the applied for mark being merely descriptive and the specimen refusal with respect to International Class 42.  See TMEP §§713.02, 714.04. 

 

The examining attorney notes that applicant can request to withdraw the Section 2(f) claim in part because it is unnecessary. 

 

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

 

SUMMARY OF ISSUES MADE FINAL that applicant must address:

 

• Partial Specimen Refusal—International Class 1
• Unnecessary 2(f) Claim in Part Advisory

 

PARTIAL SPECIMEN REFUSAL—INTERNATIONAL CLASS 1

 

Applicant was previously refused registration in International Class(es) 1 because the specimen showed an order form for a proposal outline for a study and not for the biological tissue goods in International Class 1 and the specimen was an order form or proposal that is an inappropriate type of specimen for goods.  Response options for overcoming that refusal, if any, were set forth in the prior Office action.  Applicant, however, responded to such refusal by arguing that the mark is impracticable to place on the goods and therefore an invoice or the like is an acceptable type of specimen.  The examining attorney agrees that an invoice or the like is an acceptable type of specimen for these particular goods, but does not agree that the specimen shows 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 Class(es) 1 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).

 

Specimen does not show use in specific class(es).  Registration is refused because the specimen does not show the applied-for mark as actually used in commerce in connection with any of the goods and/or services specified in International Class(es) 1.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); In re Keep A Breast Found., 123 USPQ2d 1869, 1876-79 (TTAB 2017); TMEP §§904, 904.07(a), 1301.04(d), (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 goods and/or services identified in the statement of 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); see In re Gulf Coast Nutritionals, Inc., 106 USPQ2d 1243, 1247 (TTAB 2013).

 

Specifically, the specimen does not show the organoids being offered as a distinct product.  The proposal indicates that the organoids are part of a whole study service and not a separable product. Therefore, the order form or proposal does not show the applied-for mark in use in connection with the biological tissue goods in International Class 1. 

 

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), 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 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.  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. 

In view of the foregoing, the refusal to register the applied-for mark for failing to show the applied-for mark  in use in commerce pursuant to Trademark Act Section 1 and 45 is now made FINAL with respect to International Class 1. 

 

UNNECESSARY 2(f) CLAIM IN PART ADVISORY

 

Applicant claims that the entire applied-for mark has acquired distinctiveness under Trademark Act Section 2(f), in part; however, the mark appears to be inherently distinctive and is eligible for registration on the Principal Register without proof of acquired distinctiveness.  See 15 U.S.C. §1052(f); TMEP §1212.02(d).  As this Section 2(f) claim, in part appears to be unnecessary, applicant has the option to withdraw this claim.  See TMEP §1212.02(d).

 

Applicant may withdraw this claim by instructing the trademark examining attorney to delete it from the application record.  See id.  If applicant does not withdraw the claim, it will remain in the application record and be printed on the registration certificate.  See TMEP §1212.10.

 

A claim of acquired distinctiveness, in part may be construed as a concession by applicant that part of the applied-for mark is not inherently distinctive.  See Cold War Museum, Inc. v. Cold War Air Museum, Inc., 586 F.3d 1352, 1358, 92 USPQ2d 1626, 1629 (Fed. Cir. 2009) (citing Yamaha Int’l Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 1577, 6 USPQ2d 1001, 1005 (Fed. Cir. 1988)); TMEP §1212.02(b).

 

RESPONSE GUIDELINES

 

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.

 

If applicant does not timely respond to this Office action, the following class will be deleted from the application:  International Class 1.  See 37 C.F.R. §2.65(a); TMEP §718.02(a). 

 

In such case, the application will then proceed with the following class only:  International Class 42.  See TMEP §718.02(a). 

 

 

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).

 

 

/Alexandra Portaro/

Alexandra Portaro

Trademark Examining Attorney

Law Office 126

(571) 270-3924

Alexandra.Portaro@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 14, 2021 for

U.S. Trademark Application Serial No. 88870154

 

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. 

 

 

/Alexandra Portaro/

Alexandra Portaro

Trademark Examining Attorney

Law Office 126

(571) 270-3924

Alexandra.Portaro@uspto.gov

 

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 March 14, 2021, 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.”