To: | Preply, Inc. (trademarks@donahue.com) |
Subject: | U.S. Trademark Application Serial No. 88903043 - PREPLY - 31482.02 |
Sent: | August 01, 2020 11:13:35 AM |
Sent As: | ecom108@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88903043
Mark: PREPLY
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Correspondence Address: 1999 HARRISON STREET, 26TH FL.
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Applicant: Preply, Inc.
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Reference/Docket No. 31482.02
Correspondence Email Address: |
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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: August 01, 2020
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting marks that would bar registration under Trademark Act Section 2(d). 15 U.S.C. §1052(d); TMEP §704.02.
Refusal – Multiple Marks on Specimen – Applies to International Class 09 ONLY
Note: The specimens submitted for International Classes 41 and 42 are acceptable and made of record.
In this case, the application drawing shows the following two elements: a design consisting of two banners intersecting on a diagonal; the lower banner is striped, the banner on top consists of two solid squares; and the stylized wording “PREPLY”. However, the specimen for International Class 09 shows these elements spatially separated to such a degree that they each appear as separate and distinct marks. More specifically, the stylized design appears inside of a square border that is set off from the wording “PREPLY: LEARN LANGUAGES”.
Applicant may not delete one or more of these separate elements because doing so would materially alter the commercial impression of the mark as originally filed. See 37 C.F.R. §2.72(a)(2); TMEP §§807.12(a), 807.14 et seq. Specifically, the deletion of either the distinctive design or the distinctive wording “PREPLY” would significantly alter the overall visual and/or aural commercial impression imparted by the applied-for mark.
Applicant may respond to this refusal by submitting the following:
(1) A substitute specimen showing the entire mark on the drawing in use in commerce for International Class 09; and
(2) The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “The substitute specimen was in use in commerce at least as early as the filing date of the application.” See 37 C.F.R. §§2.59(a), 2.193(e)(1); TMEP §904.05. If submitting a specimen requires an amendment to the dates of use, applicant must also verify the amended dates. 37 C.F.R. §2.71(c); TMEP §904.05.
Alternatively, applicant may respond by submitting an amendment to the application from a use in commerce basis under Trademark Act Section 1(a) to an intent to use basis under Section 1(b), and the refusal will be withdrawn. See TMEP §806.03(c). However, if applicant amends the basis to Section 1(b), registration will not be granted until applicant later amends the application back to use in commerce by filing an acceptable allegation of use with a proper specimen showing one mark. See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103. If the same specimen is submitted with an allegation of use, the same refusal will likely issue.
To amend to Section 1(b), applicant must submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “Applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods and/or services listed in the application as of the filing date of the application.” 37 C.F.R. §2.34(a)(2); TMEP §806.01(b); see 15 U.S.C. §1051(b); 37 C.F.R. §§2.35(b)(1), 2.193(e)(1).
Declaration for Substitute Specimen – TEAS Instructions
How to submit a verified specimen.
After opening the appropriate TEAS response form, answer “Yes” to form wizard question #2, click “Continue,” and provide the following for each relevant class for which a specimen is being submitted:
(1) Under the heading “Classification and Listing of Goods/Services/Collective Membership Organization,” check the box next to the following statement: “Check here to modify the current classification number; listing of goods/services/the nature of the collective membership organization; dates of use; and/or filing basis; or to submit a substitute specimen, a foreign registration certificate, or proof of renewal of a foreign registration. If not checked, the changes will be ignored.”;
(2) Attach specimen under “Specimen File” (attachment may not exceed 5 megabytes);
(3) Describe in the box below that location what the attached specimen consists of;
(4) Check the box below the specimen description next to the following statement (to ensure that the declaration language is inserted into the form): “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” [for an application based on Section 1(a), Use in Commerce] OR “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use” [for an application based on Section 1(b) Intent-to-Use].; and
(5) Follow the instructions within the form for signing. The form will require two signatures: one in the “Declaration Signature” section and one in the “Response Signature” section.
Failure to Respond – Abandonment of International Class 09 (Advisory)
How to respond. Click to file a response to this nonfinal Office action.
/Brian P. Callaghan/
Trademark Examining Attorney
Law Office 108
Phone: (571) 272-4906
Email: brian.callaghan@uspto.gov
RESPONSE GUIDANCE