To: | GOOGLE LLC (tmdocket@google.com) |
Subject: | U.S. Trademark Application Serial No. 90010877 - PERSPECTIVE - GT-1559-US-1 |
Sent: | December 21, 2020 09:31:47 PM |
Sent As: | ecom124@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90010877
Mark: PERSPECTIVE
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Correspondence Address:
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Applicant: GOOGLE LLC
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Reference/Docket No. GT-1559-US-1
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: December 21, 2020
This Office action is in response to applicant’s communication filed on December 17, 2020.
In the first Office action, the examining attorney refused registration under Trademark Act Sections 1 and 45 because the submitted specimens did not show use of the mark with goods in Class 009. Further, the examining attorney required a clearer image of the mark and clarification of color in the color claim and mark description. The examining attorney also issued an advisory as to prior pending application Serial No. 86312819 as a potential bar to the registration of applicant’s mark. In its response, applicant submitted an amended black and white drawing.
The examining attorney notes that the amended drawing has been accepted and made of record. However, upon careful consideration, the applicant did not address the specimen refusal. Accordingly, the specimen refusal and the advisory as to the potential likelihood of confusion refusal is maintained and continued. Further, although the amended drawing renders the issue of referencing colors in the mark description and color claim, the description of the mark is incomplete. Therefore, the following requirement is now being made.
Description of the Mark Incomplete
The following description is suggested, if accurate: The mark consists of a circle separated in half, with the left-hand side of the circle divided into quarters. The bottom left quarter is inverted. To the right of the design is the wording PERSPECTIVE.
Specimen Does Not Show Use of Mark with Specified Goods
THIS PARTIAL REFUSAL APPLIES TO CLASS 009 ONLY
Specifically, the submitted specimen does not show the mark being used in connection with any type of downloadable software.
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)(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 on the specimen itself, within the TEAS form that submits the specimen, or in a verified statement under 37 C.F.R. §2.20 or 28 U.S.C. §1746 in a later-filed response. See 37 C.F.R. §2.56(c); TMEP §§904.03(i), 1301.04(a).
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 and/or 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.
Potential Section 2(d) Refusal – Likelihood of Confusion Advisory
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
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.
Janet Lee
/Janet H. Lee/
Trademark Examining Attorney
Law Office 124
Phone: (571) 272-1053
Email: janet.lee6@uspto.gov
RESPONSE GUIDANCE