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:  September 26, 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 the Office Records

 

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).

 

SUMMARY OF ISSUES that applicant must address:

 

·       Specimen Does Not Show Use for Services

• Mark Differs on Drawing and Specimen: Not Material

·       Identification of Services - Particular Wording Indefinite

 

Specimen Does Not Show Use for Services

 

Registration is refused because the specimen does not show the applied-for mark as actually used in commerce in International Class 035.  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).  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 services 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, the specimen a cropped image of a screenshot of an online store website operated by  a third party, where applicant’s product is listed and shows the mark only in the context of the product listed therein. See the attached evidence of the full webpage showing applicant’s specimen of use image that has been cropped. Thus, the specimen of use does not indicate applicant is using the mark in commerce for the store services. 

 

Examples of specimens.  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)(2), (c); TMEP §1301.04(a), (h)(iv)(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 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. 

 

 

Mark Differs on Drawing and Specimen: Not Material

 

In the alternative, registration is refused because the specimen does not show the mark in the drawing in use in commerce in International Class 035, which is required in the application or amendment to allege 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 NEXUSLABS and the design of the letter N.  However, the drawing displays the mark as NEXUSLABS and the design of the letter N.  The mark on the specimen does not match the mark in the drawing because it adds LAB.  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 different specimen (a verified “substitute” specimen) for each applicable international class that (a) shows the mark in the drawing in actual use in commerce for the goods and/or services in the application or amendment to allege use, and (b) 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.

 

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).

 

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 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.

 

 

 

Identification of Services - Particular Wording Indefinite

 

The following wording in bold in the identification of services is indefinite and must be clarified because the goods are unclear or are duplicated.  See TMEP §1402.01. 

 

International Class 035: (Based on Use in Commerce) On-line retail store services featuring supplements, vitamins, multi-vitamin, minerals, antioxidants, sports and athletic supplement, essential fatty acids, amino acids, herbal supplements, food and grocery products, cocoa, tea, coffee, flour, nutritional bars, milk, nuts, spices, salt, sweeteners, fruit, honey, chocolate, rice, noodles, cooking oils, candy, cookies, crackers, pancake and waffle mix, peanut butter, jam, bread mix and cookie mix, personal care products, skin creams, lotions, oils and toners, facial masks, facial brushes, wash, soap, deodorant, hand sanitizers, lip balm, hair shampoo and conditioner, sunscreen, shave cream and shaver, eye shadow, lipstick, makeup remover, mascara, nail polish, hair color, brush, dryer, baby and child care products, toys, diapers, wipes, diaper rash cream, multi-vitamins, cough syrup, earache drops, bandages, toothpaste, shampoo, body wash, soap, bubble bath, baby food, cookies, juice containing fruit and flavored powders to be added to milk, health and fitness related devices, tooth brushes, tongue scrapers, exercise mats and aromatherapy products, test kits for pH, pregnancy, human blood type and diabetes, human blood test and blood pressure monitoring devices, pill cases, drink mixers, air purifiers, products for the care of pets, pets treats, homeopathic treatment products, aroma therapeutic treatment products, products for use in the home, multi-purpose cleaners, glass cleaners, dishwashing detergent, laundry detergent, air fresheners, kitchenware, cookware, tableware (Based on Intent to Use) On-line retail store services featuring subscription boxes containing supplements, vitamins, multi-vitamin, minerals, antioxidants, sports and athletic supplement, essential fatty acids, amino acids, herbal supplements, food and grocery products, cocoa, tea, coffee, flour, nutritional bars, milk, nuts, spices, salt, sweeteners, fruit, honey, chocolate, rice, noodles, cooking oils, candy, cookies, crackers, pancake and waffle mix, peanut butter, jam, bread mix and cookie mix, personal care products, skin creams, lotions, oils and toners, facial masks, facial brushes, wash, soap, deodorant, hand sanitizers, lip balm, hair shampoo and conditioner, sunscreen, shave cream and shaver, eye shadow, lipstick, makeup remover, mascara, nail polish, hair color, brush, dryer, baby and child care products, toys, diapers, wipes, diaper rash cream, multi-vitamins, cough syrup, earache drops, bandages, toothpaste, shampoo, body wash, soap, bubble bath, baby food, cookies, juice containing fruit and flavored powders to be added to milk, health and fitness related devices, tooth brushes, tongue scrapers, exercise mats and aromatherapy products, test kits for pH, pregnancy, human blood type and diabetes, human blood test and blood pressure monitoring devices, pill cases, drink mixers, air purifiers, products for the care of pets, pets treats, homeopathic treatment products, aroma therapeutic treatment products, products for use in the home, multi-purpose cleaners, glass cleaners, dishwashing detergent, laundry detergent, air fresheners, kitchenware, cookware, tableware

 

 

Applicant is advised to delete or modify the duplicate entry in the identification of goods and/or services in International Class 035 for “soap” or “multi-vitamins.”  See generally TMEP §§1402.01, 1402.01(a).  If applicant does not respond to this issue, be advised that the USPTO will remove duplicate entries from the identification prior to registration.

 

If modifying one of the duplicate entries, applicant may amend it to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Also, generally, any deleted goods and/or services may not later be reinserted.  TMEP §1402.07(e).

 

 

Applicant must amend this wording to specify the common commercial or generic name for the services.  If there is no common commercial or generic name for the services, then applicant must describe the nature of the services as well as their main purpose, channels of trade, and the intended consumer(s). 

 

Applicant may change this wording to the following, if accurate.  See TMEP §1402.01.

 

International Class 035: (Based on Use in Commerce) On-line retail store services featuring supplements, vitamins, multi-vitamin, minerals, antioxidants, sports and athletic supplement, essential fatty acids, amino acids, herbal supplements, food and grocery products, cocoa, tea, coffee, flour, nutritional bars, milk, nuts, spices, salt, sweeteners, fruit, honey, chocolate, rice, noodles, cooking oils, candy, cookies, crackers, pancake and waffle mix, peanut butter, jam, bread mix and cookie mix, personal care products, skin creams, lotions, oils and toners, facial masks, facial brushes, body wash, soap, deodorant, hand sanitizers, lip balm, hair shampoo and conditioner, sunscreen, shave cream and shaving blades, eye shadow, lipstick, makeup remover, mascara, nail polish, hair color, hair brushes, hair dryers, baby and child care products, namely, toys, diapers, wipes, diaper rash cream, multi-vitamins, cough syrup, earache drops, bandages, toothpaste, shampoo, body wash, soap, bubble bath, baby food, cookies, juice containing fruit and flavored powders to be added to milk, health and fitness related devices, tooth brushes, tongue scrapers, exercise mats and aromatherapy products, test kits for pH, pregnancy, human blood type and diabetes, human blood test and blood pressure monitoring devices, pill cases, drink mixers, air purifiers, products for the care of pets, pets treats, homeopathic treatment products, aroma therapeutic treatment products, products for use in the home, multi-purpose cleaners, glass cleaners, dishwashing detergent, laundry detergent, air fresheners, kitchenware, cookware, tableware (Based on Intent to Use) On-line retail store services featuring subscription boxes containing supplements, vitamins, multi-vitamin, minerals, antioxidants, sports and athletic supplement, essential fatty acids, amino acids, herbal supplements, food and grocery products, cocoa, tea, coffee, flour, nutritional bars, milk, nuts, spices, salt, sweeteners, fruit, honey, chocolate, rice, noodles, cooking oils, candy, cookies, crackers, pancake and waffle mix, peanut butter, jam, bread mix and cookie mix, personal care products, skin creams, lotions, oils and toners, facial masks, facial brushes, body wash, soap, deodorant, hand sanitizers, lip balm, hair shampoo and conditioner, sunscreen, shave cream and shaving blades, eye shadow, lipstick, makeup remover, mascara, nail polish, hair color, hair brushes, hair dryers, baby and child care products, namely, toys, diapers, wipes, diaper rash cream, multi-vitamins, cough syrup, earache drops, bandages, toothpaste, shampoo, body wash, soap, bubble bath, baby food, cookies, juice containing fruit and flavored powders to be added to milk, health and fitness related devices, tooth brushes, tongue scrapers, exercise mats and aromatherapy products, test kits for pH, pregnancy, human blood type and diabetes, human blood test and blood pressure monitoring devices, pill cases, drink mixers, air purifiers, products for the care of pets, pets treats, homeopathic treatment products, aroma therapeutic treatment products, products for use in the home, multi-purpose cleaners, glass cleaners, dishwashing detergent, laundry detergent, air fresheners, kitchenware, cookware, tableware

 

 

 

Identifications of services can be amended only to clarify or limit the services; adding to or broadening the scope of the services is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.  Therefore, applicant may not amend the identification to include services that are not within the scope of the services set forth in the present identification.

 

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 at http://tess2.gov.uspto.report/netahtml/tidm.html.  See TMEP §1402.04. 

 

 

 

 

 

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

 

 

Anthony Rinker

/Anthony Rinker/

Trademark Examining Attorney

Law Office 102

Ph. 571-272-5491

anthony.rinker@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 September 26, 2020 for

U.S. Trademark Application Serial No. 90009260

 

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. 

 

 

Anthony Rinker

/Anthony Rinker/

Trademark Examining Attorney

Law Office 102

Ph. 571-272-5491

anthony.rinker@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 September 26, 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.”