Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

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 13, 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.

 

SEARCH OF USPTO DATABASE OF MARKS

 

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.

 

SUMMARY OF ISSUES:

 

·         Specimen Unacceptable

·         Amended Identification Of Goods Required – Partial Requirement

 

SPECIMEN UNACCEPTABLE

Advertising for goods is not an acceptable specimen.  Registration is refused because the specimen appears to be mere advertising and does not properly show the applied-for mark as actually used in commerce in International Classes 9 and 12.  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, 904.04(b), 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 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). 

 

Specifically, applicant submitted an information sheet containing a description of the goods.  However, the sheet does not provide the price or means to order the goods.  It merely lists applicant’s contact information.  A specimen with a telephone number, internet address, and/or mailing address that appears only with corporate contact information may not show sufficient means for ordering the goods.  See In re Genitope Corp., 78 USPQ2d 1819, 1822 (TTAB 2006); TMEP §904.03(i)(C)(2).  In that circumstance, the specimen may also need to include instructions on how to place an order or an offer to accept orders.  See In re Quantum Foods, Inc., 94 USPQ2d 1375, 1379 (TTAB 2010); TMEP §904.03(i)(C)(2).  Therefore, the specimen is unacceptable.

 

Advertising is not acceptable as a specimen for goods.  See In re Siny Corp., 920 F.3d 1331, 1336, 2019 USPQ2d 127099, at *2-3 (Fed. Cir. 2019) (citing Powermatics, Inc. v. Globe Roofing Prods. Co., 341 F.2d 127, 130, 144 USPQ 430, 432 (C.C.P.A. 1965)); see also Avakoff v. S. Pac. Co., 765 F.2d 1097, 1098, 226 USPQ 435, 436 (Fed. Cir. 1985); TMEP §904.04(b), (c).  Advertising includes online advertising banners appearing on search-engine results pages or in social media, advertising circulars and brochures, price lists, and business cards.  See TMEP §904.04(b). 

 

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.  37 C.F.R. §2.56(c).

 

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 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.  

 

If applicant responds to the refusal, applicant must also respond to the requirement set forth below.

 

AMENDED IDENTIFICATION OF GOODS REQUIRED – PARTIAL REQUIREMENT

 

THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE GOODS SPECIFIED THEREIN

 

Class 9

 

The wording “autonomous flight systems for aircraft, namely, computer software and hardware for in-flight obstacle detection and avoidance, landing zone evaluation, and vehicle state estimation; navigation, surveying, mapping and inspection apparatus for aircraft, namely, surveying instruments in the nature of mapping sensors, autonomous flight systems comprised of computer software and hardware for aircraft navigation and terrain surveying and mapping, and geophysical survey systems comprised of computer software and hardware for terrain surveying and mapping” in the identification of goods is indefinite and must be clarified to specify the nature of the software.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Applicant may adopt the following identification, with changes highlighted in bold, if accurate: 

 

Class 9 – “Autonomous flight systems for aircraft, namely, recorded computer software and hardware for in-flight obstacle detection and avoidance, landing zone evaluation, and vehicle state estimation; navigation, surveying, mapping and inspection apparatus for aircraft, namely, surveying instruments in the nature of mapping sensors, autonomous flight systems comprised of recorded computer software and hardware for aircraft navigation and terrain surveying and mapping, and geophysical survey systems comprised of recorded computer software and hardware for terrain surveying and mapping; 3D position sensing apparatus for aircraft”; and

 

Class 12 – “Aircraft featuring an apparatus for aerially imaging, surveying and/or mapping terrain, particularly for unmanned rotorcraft; aircraft for autonomously transporting cargo, goods, and people”

 

Applicant may amend the identification to clarify or limit the goods, but not to broaden or expand the goods beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods may not later be reinserted.  See TMEP §1402.07(e).

 

For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

 

How to respond.  Click to file a response to this nonfinal Office action.    

 

ASSISTANCE

 

Please call or email the assigned trademark examining attorney with questions about this Office action.

 

/Evonne M. Neptune/

Trademark Examining Attorney, Law Office 127

United States Patent and Trademark Office

(571) 270-1740

evonne.neptune@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 August 13, 2020 for

U.S. Trademark Application Serial No. 88957841

 

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. 

 

 

/Evonne M. Neptune/

Trademark Examining Attorney, Law Office 127

United States Patent and Trademark Office

(571) 270-1740

evonne.neptune@uspto.

 

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 August 13, 2020, 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.”