To: | Project Visual International, Inc. (emilesnick@idealegal.com) |
Subject: | U.S. Trademark Application Serial No. 90035299 - PV - N/A |
Sent: | October 14, 2020 03:33:41 PM |
Sent As: | ecom103@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90035299
Mark: PV
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Correspondence Address: 2240 N INTERSTATE AVE., SUITE 270
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Applicant: Project Visual International, Inc.
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Reference/Docket No. N/A
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: October 14, 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.
SUMMARY OF REFUSAL(S) / REQUIREMENT(S):
• Application Not Entitled to Register - Prior Pending Applications
• Refusal to Register - Drawing of Mark Differs from Display on Specimen of Use - International Class 40
• Color Drawing / No Color Claim
• Identification of Goods
APPLICATION NOT ENTITLED TO REGISTER - PRIOR PENDING APPLICATIONS
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 applications. 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.
Please note the additional basis to refuse registration.
REFUSAL TO REGISTER - DRAWING OF MARK DIFFERS FROM DISPLAY ON SPECIMEN OF USE – INTERNATIONAL CLASS 40
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 40, 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 in black and white. However, the drawing displays the mark in the color purple. The mark on the specimen does not match the mark in the drawing because the color purple differs from black and white. Applicant has thus failed to provide the required evidence of use of the mark in commerce. See TMEP §807.12(a).
RESPONSE OPTIONS for this refusal
Applicant may respond to this refusal by satisfying one of the following:
(1) 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. 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.
(2) 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 application or amendment to allege use, and (b) 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 for services. 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).
(3) If applicant cannot satisfy one of the above requirements, applicant may amend the application from a use in commerce basis under Trademark Act Section 1(a) to an intent to use basis under Section 1(b), for which no specimen is required. See TMEP §806.03(c). However, if applicant amends the basis to Section 1(b), registration will not be granted until applicant later amends the application back to use in commerce by filing an acceptable allegation of use with a proper specimen. 15 U.S.C. §1051(b)-(d); 37 C.F.R. §2.35(b)(8); TMEP §§806.01(b), 1103.
To amend to Section 1(b), applicant must submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “Applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods and/or services listed in the application as of the filing date of the application.” TMEP §806.03(c); see 15 U.S.C. §1051(b)(3)(B); 37 C.F.R. §§2.34(a)(2).
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.
OTHER ISSUES
Although the examining attorney has refused registration, Applicant may respond to the refusal to register by submitting evidence and arguments in support of registration. If Applicant chooses to respond to the refusal to register, the applicant must also respond to the following issues.
COLOR DRAWING / NO COLOR CLAIM
Applicant may respond to this requirement by satisfying one of the following:
(1) If color is not a feature of the mark, applicant must submit a black-and-white drawing of the mark to replace the color drawing. See TMEP §807.07(a)(i). However, any other amendments to the drawing will not be accepted if they materially alter the mark. 37 C.F.R. §2.72; see TMEP §§807.14 et seq.
(2) If color is a feature of the mark, applicant must submit a statement (a) listing all the colors that are claimed as a feature of the mark and (b) describing all the literal and design elements in the mark that specifies where each color appears in those elements. 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §807.07(a)-(a)(ii). Generic color names must be used to describe the colors in the mark, e.g., red, yellow, blue. TMEP §807.07(a)(i)-(ii). If black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark, applicant must so specify in the description. See TMEP §807.07(d). The following color claim and description are suggested, if accurate:
Color claim: “The color purple is claimed as a feature of the mark.”
Description: “The mark consists of the stylized letters PV in the color purple with the ring of the “P” looped over the first line of the “V”, and the color white appearing in the mark represents background and/or transparent areas and is not part of the mark.”
See TMEP §807.07(b).
IDENTIFICATION OF GOODS – INTERNATIONAL CLASSES 9 & 20
The identification of goods is indefinite and must be clarified. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
In particular, for international class 9, Applicant must provide greater specificity with regard to, “face shields, namely, protective face shields”, and “protective face shields for use in the workplace”. See e.g. attached excerpted webpage entry from the USPTO’s online U.S. Acceptable Identification of Goods and Services Manual (ID Manual). Also, “face shields to protect against the spread of viruses and contaminants” belongs in international class 10. Proper classification of goods and services is a purely administrative matter within the sole discretion of the USPTO. See In re Faucher Indus. Inc., 107 USPQ2d 1355, 1357 (TTAB 2013) (quoting In re Tee-Pak, Inc., 164 USPQ 88, 89 (TTAB 1969)).
For international class 20, Applicant must provide greater specificity with regard to, “sneeze guards”, “protective shields around check-out counters”, “plastic shields for retail clerks to protect against the spread of viruses and contaminants”, and “wooden signage”.
The USPTO’s rules and policies with respect to identifications of goods and/or services are updated periodically to reflect changes in the marketplace and technology as well as changes to the international classification system. See TMEP §1402.14. For guidance on drafting acceptable identifications of goods and/or services, use the USPTO’s online U.S. Acceptable Identification of Goods and Services Manual (ID Manual), which is continually updated in accordance with prevailing rules and policies. See TMEP §1402.04.
For Applicant’s convenience, all indefinite terms and phrases, and corresponding corrections suggested by the examining attorney, have been bolded.
Without submitting additional filing fees, Applicant may adopt two of the following identification of goods, if accurate:
International class 9 –
Face shields, namely, protective industrial face shields;
Protective face shields for use in the workplace for protection against {specify, e.g. fire};
Workmen’s protective face shields;
Digital signs;
Luminous signs;
Backlit signs;
Digital signage;
Digital signage display panels
International class 10 –
Face shields to protect against the spread of viruses and contaminants [moved from class 9];
International class 20 –
Sneeze guards for installation on furniture;
Protective shields for protecting check-out counters;
Plastic shields that surround retail clerks to protect against the spread of viruses and contaminants;
Wooden signboards;
Plastic or wooden signs;
Decorative signs, namely, signboards of wood or plastics;
Decorative boxes made of wood
MULTIPLE CLASS APPLICATION
Applicant may choose to adopt more than two identifications listed above and proceed as an extended multiple-class application. For an application with more than one international class, known as a “multiple-class application”, an applicant must satisfy all the requirements below for each international class:
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule). Specifically, the application identifies goods and/or services based on use in commerce that are classified in at least 4 classes; however, applicant submitted a fee(s) sufficient for only 3 classes. Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.
(3) Submit verified dates of first use of the mark anywhere and in commerce for each international class. See more information about verified dates of use.
(4) Submit a specimen for each international class. The current specimen is acceptable for classes 9, 10 and 20; and applicant needs a specimen for class 40. See more information about specimens.
Examples of specimens for goods. 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).
Examples of specimens for services. 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, 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).
(5) Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.” See more information about verification.
See 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).
For an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.
FEE INFORMATION
The USPTO changed the federal trademark rules to eliminate the TEAS Regular application, which is now considered a “TEAS Standard” application. See 37 C.F.R. §2.6(a)(iii). The fee for adding classes to a TEAS Standard application is $275 per class. See id. For more information about these changes, see the Mandatory Electronic Filing webpage.
GUIDELINES FOR RESPONDING TO THE OFFICE ACTION
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
How to respond. Click to file a response to this nonfinal Office action.
/VJ/
Gene V.J. Maciol, II
Attorney-advisor
Law Office 103
gene.maciol@uspto.gov
571-273-9280 fx
571-272-9280 ph
RESPONSE GUIDANCE