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:  June 09, 2021

 

 

 

THIS IS A FINAL ACTION.

 

INTRODUCTION

 

On December 10, 2020, action on this application was suspended pending the disposition of Cancellation No. 92075803.  The proceeding has concluded.  The subject of the proceeding, Registration No. 1189725, was cancelled on February 22, 2021, and is no longer a bar to the registration of applicant’s mark.  Therefore, the Section 2(d) refusal is withdrawn with respect to this registration.

 

In previous Office actions dated July 21, 2020, and December 10, 2020, the trademark examining attorney maintained and continued refusals of registration based on the following:  Trademark Act Section 2(d) for a likelihood of confusion with a registered mark as to the goods in International Class 005, failure to show the applied-for mark in use in commerce with any of the specified goods in International Class 010.  In addition, applicant was required to provide additional information about the specimen for the goods in International Class 010.

 

As delineated above, the Section 2(d) refusal is hereby withdrawn.  See TMEP §§713.02, 714.04. 

 

The trademark examining attorney maintains and now makes FINAL the following refusal and requirement:  failure to show the applied-for mark in use in commerce with any of the specified goods in International Class 010, and the requirement to provide additional information about the specimen for the goods in International Class 010.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

SUMMARY OF ISSUES:

·       (Partial) Refusal of Registration:  Unacceptable Specimen of Use (MADE FINAL)

·       (Partial) Request for Additional Information About Specimen (MADE FINAL)

 

 

REFUSAL OF REGISTRATION:  UNACCEPTABLE SPECIMEN OF USE

(THIS PARTIAL REFUSAL APPLIES ONLY TO THE GOODS IN INTERNATIONAL CLASS 010)

(MADE FINAL)

 

Applicant was previously refused registration in International Class 010 because the specimen appeared to consist of a digitally created or altered image or a mockup and did not show the applied-for mark as actually used in commerce.  In addition, applicant was required to furnish information/documentation about the specimen to establish that it was actually used in commerce.  Response options for overcoming that refusal were set forth in the prior Office action.  Applicant, however, did not respond to the refusal in its December 8, 2020, response.  In addition, applicant did not supply responses to the request for additional information below.

 

Thus, the refusal to register the applied-for mark in International Class 010 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).  In addition, the requirement for information/documentation about the original specimen is made final below.  37 C.F.R. §2.61(b).

 

Registration is refused because the specimen appears to consist of a digitally created or altered image or a mockup of a depiction of the mark on the goods and does not show the applied-for mark as actually used in commerce in International Class 010.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a), (c); TMEP §§904.04(a), 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.  15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).  “Use in commerce” means (1) a bona fide use of the applied-for mark in the ordinary course of trade (and not merely to reserve a right in the mark), (2) the mark is placed in any manner on the goods, packaging, tags or labels affixed to the goods, or displays that directly associate the mark with the goods and have a point-of-sale nature, and (3) the goods are actually sold or transported in commerce.  See 15 U.S.C. §1127.

 

An image of a product or packaging that has been digitally created or altered to include the mark or a mockup of how the mark may be displayed on the product or packaging is not a proper specimen for goods because it does not show actual use of the mark in commerce.  See 15 U.S.C. §1127; 37 C.F.R. §2.56(c); TMEP §904.04(a).

 

In this case, magnification of the specimen reveals a high degree of pixilation surrounding the mark.  In addition, the mark is displayed on the goods in a manner in which it appears to float above the massager goods.  This suggests that the mark was digitally imposed onto a pre-existing image to create a composite image incorporating two separate images.  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, 904.07(a).  As noted above, an image that has been digitally created or altered to show the applied-for mark on, or in connection with, Applicant’s goods does not show actual use of the mark in commerce. See 15 U.S.C. §1127; TMEP §§904.04(a), 904.07(a). Therefore, the specimen does not show actual use of the mark in commerce. 

 

Applicant may respond to the specimen refusal by satisfying one of the following for each applicable international class: 

 

(1)       Submit the additional information/documentation referenced below establishing that the original specimen was actually used in commerce as of the filing date of the application.

 

(2)       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 and (b) shows the mark in actual use in commerce for the goods identified in the application.  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.  For instructions on how to submit a different specimen using the online Trademark Electronic Application System (TEAS) form, see the Specimen webpage.

 

Applicant must also fully respond to the requirement for additional information and documentation referenced below for any different specimen provided.  Failure to comply with a requirement to furnish information is grounds for refusing registration.  In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.  Merely stating that information is available on applicant’s or a third party website or providing a hyperlink of such a website is an insufficient response and will not make the additional information or materials of record.  See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004). 

 

(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.

 

If applicant amends the basis, the requirement for additional information and documentation referenced below will be withdrawn.

 

For the reasons set forth above, the Refusal of Registration pursuant to Trademark Act Sections 1 and 45 is hereby made FINAL.

 

 

REQUEST FOR ADDITIONAL INFORMATION ABOUT SPECIMEN OF USE

(THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE GOODS IN INTERNATIONAL CLASS 010)

(MADE FINAL)

 

Additional information/documentation about specimen required.  To permit proper examination of the application record for compliance with use in commerce requirements, applicant was previously required to respond to the below requests for information and documentation about the specimen for International Class 010.  See 37 C.F.R. §2.61(b); TMEP §814.  However, applicant did not respond to this requirement in its December 8, 2020, response.  Therefore, this requirement is hereby MADE FINAL.

 

A specimen must show the mark as actually used in commerce, which means use in the ordinary course of trade, and not merely to reserve a right in the trademark.  15 U.S.C. §§1051, 1052, 1127.  Because the specimen of record appears to be digitally created or altered, or is a mockup, further information is necessary to determine whether the specimen is in actual use in commerce. 

 

Answer for each specimen/photograph/image previously provided.  For any website source, provide a digital copy of the entire webpage from top to bottom, as rendered in an Internet browser, that includes the URL and access or print date.  TMEP §710.01(b) (citing In re I-Coat Co., 126 USPQ2d 1730, 1733 (TTAB 2018)). 

 

(1)       Identify the particular good(s) listed in the application for which the specimen(s) was submitted to show use of the mark.

 

(2)       Explain whether the specimen was created for submission with this application.  If so, specify the date each specimen was created.  If applicant used the image(s) of the goods shown in the specimen(s) from a third-party website, provide the URL of the website and a digital copy of relevant webpage(s) for each image.

 

(3)       Provide information about and examples of how applicant’s goods appear in the actual sales environment.

(a)       If sold in stores, provide a representative sample of the name(s) of the stores and of photographs showing the goods for sale in the named stores, such as photographs of the sales displays or goods on shelves with the mark. 

(b)       If sold online, provide a representative sample of the name(s) of the online retailers, the website URL(s) for each named retailer, and a digital copy of the webpages showing the goods for sale on the named website.

(c)       If sold in another type of sales environment (e.g., catalogs, trade shows), identify the environment and provide photographs and/or documentation showing the goods for sale in that environment. 

 

(4)       If the information in question (3) about how the goods appear in the actual sales environment is not available to applicant, please describe how applicant’s goods are sold or transported and provide photographs and other documentation showing how applicant’s mark appears on the goods and/or its packaging when the goods are sold or transported to or within the United States.

 

(5)       For each category of sales environment specified in response to questions (3) and (4), specify when the goods bearing the mark were first available for purchase within the United States, the date of the first sale of the goods to or within the United States, and whether the goods are still for sale to or within the United States in that environment.

 

(6)       For the goods identified in response to question (1), specify the dollar amount of sales with or within the United States and provide at least three invoices or other supporting documentation that show payments or other consideration made, redacting personal or private information of buyers as necessary.

 

Failure to comply with a requirement to furnish information is grounds for refusing registration.  In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.  Merely stating that information is available on applicant’s or a third party website or providing a hyperlink of such a website is an insufficient response and will not make the additional information or materials of record.  See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).

 

For the reasons set forth above, this requirement is hereby made FINAL.

 

 

Partial Abandonment Advisory

 

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 goods in International Class 010 will be deleted from the application.  See 37 C.F.R. §2.65(a); TMEP §718.02(a). 

 

In such case, the application will then proceed with the goods in International Class 005 only.  See TMEP §718.02(a). 

 

 

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(s) and/or requirement(s) 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. 

 

 

 

/Crystal H. Yi/

Crystal H. Yi

Trademark Examining Attorney

Law Office 123

571.270.0763

crystal.yi@uspto.gov

 

 

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).

 

 

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 09, 2021 for

U.S. Trademark Application Serial No. 88889745

 

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. 

 

 

/Crystal H. Yi/

Crystal H. Yi

Trademark Examining Attorney

Law Office 123

571.270.0763

crystal.yi@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 June 09, 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.”