To: | GLC-South Hillsboro, LLC (DCPTOTrademarkMail@hoganlovells.com) |
Subject: | U.S. Trademark Application Serial No. 88977136 - REED'S CROSSING - 006789.0558 |
Sent: | April 18, 2020 05:47:41 PM |
Sent As: | ecom130@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88977136
Mark: REED'S CROSSING
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Correspondence Address:
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Applicant: GLC-South Hillsboro, LLC
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Reference/Docket No. 006789.0558
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: April 18, 2020
DRAWING DOES NOT MATCH SPECIMEN
Mark shown on drawing does not match mark on specimen. Registration is refused because the specimen does not show the mark in the drawing in use in commerce in International Class(es) 37, which is required in the statement of use. 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), 1301.04(g)(i). The mark appearing on the specimen and in the drawing must match; that is, the mark in the drawing “must be a substantially exact representation of the mark” on the specimen. See 37 C.F.R. §2.51(a)-(b); TMEP §807.12(a).
In this case, the specimen displays the mark as “REED’S CROSSING” displayed in white with horizontal lines in the colors light brown and turquoise green. However, the drawing displays the mark as “REED’S CROSSING” displayed in black with horizontal lines in the colors light brown and turquoise green. The mark on the specimen does not match the mark in the drawing because the wording “REED’S CROSSING” is displayed in different colors from the drawing. Applicant has thus failed to provide the required evidence of use of the mark in commerce. See TMEP §807.12(a).
Response options. Applicant may respond to this refusal by satisfying one of the following:
(1) Submit a new color drawing of the mark that shows the mark on the specimen and an amendment of the description and color claim that agrees with the new drawing. See 37 C.F.R. §2.72(b). Applicant may amend the mark in the drawing to match the mark on the specimen but may not make any other changes or amendments that would materially alter the drawing of the mark. See 37 C.F.R. §2.72(a)-(b); TMEP §807.14. The following color claim and description are suggested, if accurate:
Color claim: “The colors white, light brown and turquoise green are claimed as a feature of the mark.”
Description: “The mark consists of the wording "REED'S" appearing overtop the word "CROSSING", all in white; with 3 thin horizontal lines in turquoise green under the "R", through the "D" and over the "S" in the word "REED'S"; and 2 thin horizontal lines in the color light brown appearing through the letters "R" and "E" and "D" and "S" in the word "REED'S".”
(2) Submit a new black-and-white drawing of the mark and an amendment deleting any color claim and modifying the description to delete any references to color. The following description is suggested, if accurate: “The mark consists of the wording "REED'S" appearing overtop the word "CROSSING"; with 3 thin horizontal lines under the "R", through the "D" and over the "S" in the word "REED'S"; and 2 thin horizontal lines appearing through the letters "R" and "E" and "D" and "S" in the word "REED'S".” Applicant may amend the mark in the drawing to delete color but may not make any other changes or amendments that would materially alter the mark on the drawing. See 37 C.F.R. §2.72(a)-(b); TMEP §807.14.
(3) Submit a different specimen (a verified “substitute” specimen) for each applicable international class that (a) shows the mark in the drawing in actual use in commerce in the colors depicted on the drawing and for the goods and/or services in the statement of use, and (b) was in actual use in commerce prior to the expiration of the deadline for filing the statement of use.
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).
Specimens for services must show a direct association between the mark and the services and include: (1) copies of advertising and marketing material, (2) a photograph of business signage or billboards, or (3) materials showing the mark in the sale, rendering, or advertising of the services. See 37 C.F.R. §2.56(b)(1), (c); TMEP §1301.04(a), (h)(iv)(C).
Any web page printout or screenshot submitted as a specimen, whether for goods or services, must include the webpage’s URL and the date it was accessed or printed. 37 C.F.R. §2.56(c).
Applicant may not respond by withdrawing the statement of use. See 37 C.F.R. §2.88(f); TMEP §1109.17.
For more information about drawings and instructions on how to satisfy these response options using the online Trademark Electronic Application System (TEAS) form, see the Drawing webpage.
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.
How to respond. Click to file a response to this nonfinal Office action.
/Erin Z. Dyer/
Erin Zaskoda Dyer
Trademark Examining Attorney
Law Office 130/TM Innovation Lab
(571) 272-9740
erin.dyer@uspto.gov (preferred)
RESPONSE GUIDANCE