To: | DuBarry, Adrian (pete@lasvegasperks.com) |
Subject: | U.S. Trademark Application Serial No. 90026208 - ACE - N/A |
Sent: | November 09, 2020 02:43:38 PM |
Sent As: | ecom112@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90026208
Mark: ACE
|
|
Correspondence Address: |
|
Applicant: DuBarry, Adrian
|
|
Reference/Docket No. N/A
Correspondence Email Address: |
|
COMBINED EXAMINER’S AMENDMENT/PRIORITY ACTION 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: November 09, 2020
This letter responds to the applicant’s informal communication of November 9, 2020. In Suspension Notice of October 8, 2020, prosecution of this application as suspended because of a likelihood of confusion with pending applications. The refusal under Section 2(d) of the Trademark Act as to a likelihood of confusion with certain registrations was continued and maintained. The applicant had also submitted two substitute specimens, which were refused as the specimen for International Class 25 failed to function as demonstrated Ornamental Use of the mark. The specimen for International Class 28 consisted of a printer’s proof, which is unacceptable.
In discussions today, the applicant agreed to make changes to the application, which renders citation to the prior pending applications and the registrations unnecessary. These changes are summarized in the section of this action labeled “EXAMINER’S AMENDMENT”. Therefore, the citation to the prior pending applications and the refusal under Section 2(d) of the Trademark Act are hereby withdrawn. See TMEP §§713.02, 714.04. Applicant must address the issue herein regarding the specimen for International Class 28.
Applicant must address issues shown below. On November 9, 2020, the examining attorney and Adrian Dubarry discussed the issues below. Applicant must timely respond to these issues. See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §708.05.
Specimen Unacceptable—International Class 28
A printer’s proof is not a proper specimen for goods and/or services because it does not show the mark as actually used in commerce. 37 C.F.R. §2.56(c); see 15 U.S.C. §1127; In re The Signal Cos., 228 USPQ 956, 957-58 n.4 (TTAB 1986). Printer’s proofs, generally, are preliminary copies of documents used to make corrections before publication and are not disseminated to the public.
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). As discussed, the applicant may take a photograph of the printed versions of the International Class 28 specimens submitted on September 3, 2020, and submit it electronically as a .jpeg file.
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.
Application has been amended as shown below. As agreed to by the individual identified in the Priority Action section, the examining attorney has amended the application as shown below. Please notify the examining attorney immediately of any objections. TMEP §707. In addition, applicant is advised that amendments to the goods and/or services are permitted only if they clarify or limit them; amendments that add to or broaden the scope of the goods and/or services are not permitted. 37 C.F.R. §2.71(a).
Class Deleted
International Class 25 is hereby deleted from the application. The application will proceed with Internationals Class 28 only.
Response Information
How to respond. Click to file a response to this nonfinal Office action.
/Marilyn Izzi Vengroff/
Trademark Examining Attorney
Law Office 112
(571) 270-1523 (phone)
(571) 270-2523 (fax)
marilyn.vengroff@uspto.gov
RESPONSE GUIDANCE