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:  January 15, 2021

 

The Office has reassigned this application to the undersigned trademark examining attorney.

 

This Office action is in response to applicant’s communications both filed on 12/04/20.

 

In the first Office action, dated 08/24/20, the examining attorney refused registration because the specimen appears to be mere advertising and does not properly show the applied-for mark as actually used in commerce in International Classes 9 and 16.  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, 904.04(b), 904.07(a). Response options were provided. In addition, the examining attorney required applicant to clarify whether the name Judith McNaught in the mark identifies a particular living individual.  See 37 C.F.R. §2.61(b); TMEP §§813, 1206.03. Furthermore, the examining attorney required applicant to submit an amended description of the mark. Finally, the examining attorney required applicant to submit an additional processing fee of $125 per class because the application as originally filed did not meet the TEAS Plus application filing requirements.  See 37 C.F.R. §2.22(c); TMEP §§819.01-.01(q), 819.04.

 

In its response, dated 12/04/20, applicant submitted an amended mark description. The examining attorney accepts the amended mark description and hereby makes it of record. Accordingly, the requirement entitled “Requirement to Amend Description of the Mark” is satisfied. In addition, in its response, applicant clarified that the name Judith McNaught in the mark identifies a particular living individual and provided a written consent from said individual. Accordingly, the requirement entitled “Requirement to Provide Information About Name in the Mark” is satisfied. Furthermore, in its response, applicant submitted substitute specimens. The examining attorney accepts the substitute specimens submitted by applicant and hereby makes them of record. Accordingly, the refusal entitled “Specimen Refusal – Specimen Does Not Appear to Show Mark in Use in Commerce with Goods in Application” is obviated. Finally, in its response, applicant submitted an additional processing fee of $125 per class because the application as originally filed did not meet the TEAS Plus application filing requirements.  See 37 C.F.R. §2.22(c); TMEP §§819.01-.01(q), 819.04. Accordingly, the requirement entitled “Requirement to Pay Additional Fee Due to Loss of TEAS Plus Status” is satisfied. Finally, upon further review of the application, the examining attorney is hereby issuing a new substantive refusal. The examining attorney apologizes for any inconvenience this may cause applicant.

 

Failure to Function as a Trademark for Written Works – Name of Author – New Refusal

 

Registration is refused because the applied-for mark, as used on the specimen of record, identifies only the name or pseudonym of the author of a written work; it does not function as a trademark to identify and distinguish applicant’s goods from those of others and to indicate the source of applicant’s goods.  Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051-1052, 1127; see In re First Draft, Inc., 76 USPQ2d 1183 (TTAB 2005); TMEP §§904.07(b), 1202.09(a).  Written works include books or columns presented in print, recorded, or electronic form.  See TMEP §1202.09(a).

 

Applicant may respond to this refusal by satisfying one of the following:

 

(1)  Submitting evidence that (a) the name is used on a series of written works, and (b) the name is promoted and recognized by others as the source of the series of written works.  In re First Draft, 76 USPQ2d at 1190; see TMEP §1202.09(a)-(a)(ii)(A).  Evidence of a series includes copies of at least two different book covers or packaging for recorded books that show the name sought to be registered.  TMEP §1202.09(a)(i); see In re Scholastic, Inc., 23 USPQ2d 1774, 1777-78 (TTAB 1992).  Evidence that the name is promoted and recognized by others as a source of the series includes advertising that promotes the name as a source of the series, third-party reviews showing use of the name by others to refer to the series, and/or declarations from publishers, retailers, purchasers or readers showing recognition of the name as an indicator of the source of a series of written works.  TMEP §1202.09(a)(ii)(A); see In re First Draft, 76 USPQ2d at 1191; In re Scholastic, 23 USPQ2d at 1777-78.;

 

(2)  Submitting evidence that (a) the name is used on a series of written works, and (b) the author controls the quality of the written works and controls the use of the name, such that the name has come to represent an assurance of quality to the public.  In re First Draft, 76 USPQ2d at 1190; see TMEP §1202.09(a)-(a)(ii), (a)(ii)(B); cf. In re Polar Music Int’l AB, 714 F.2d 1567, 1572, 221 USPQ 315, 318 (Fed. Cir. 1983).  Evidence of a series includes copies of at least two different book covers or packaging for recorded books that show the name sought to be registered.  TMEP §1202.09(a)(i); see In re Scholastic, 23 USPQ2d at 1777-78.  Evidence of control over the quality of the written works and use of the name includes licensing contracts or similar documentation.  TMEP §1202.09(a)(ii)(B); see In re Polar Music, 714 F.2d at 1568-72, 221 USPQ at 316-18; In re First Draft, 76 USPQ2d at 1191.  However, if the written works are published directly under applicant’s control, applicant may submit solely as evidence of control the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “The applicant publishes the goods and controls their quality.”  TMEP §1202.09(a)(ii)(B); see 37 C.F.R. §2.193(e)(1).; or

 

(3)  Amending the application to seek registration on the Supplemental Register.  Trademark Act Section 23, 15 U.S.C. §1091; see 37 C.F.R. §§2.47, 2.75(a); TMEP §§816, 1202.09(a).

 

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), and the refusal will be withdrawn.  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 along with satisfying one of the above requirements.  See 15 U.S.C. §1051(c), (d); 37 C.F.R. §§2.76, 2.88; TMEP §1103.  If the same specimen is submitted with an allegation of use, and applicant does not either provide the additional evidence described above or amend to the Supplemental Register, the same refusal will issue.

 

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 a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the filing date of the application.”  37 C.F.R. §2.34(a)(2); TMEP §806.01(b); see 15 U.S.C. §1051(b); 37 C.F.R. §§2.35(b)(1), 2.193(e)(1).

 

Response Guidelines

 

For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  For a requirement, applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

Furthermore, if applicant has an amendment that does not require the payment of a fee, submission of a specimen, response to a statutory refusal or declaration signature, applicant is encouraged to telephone the examining attorney to expedite the processing of the application.

 

 

 

 

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

 

 

/Brian P. Callaghan/

Trademark Examining Attorney

Law Office 108

Phone: (571) 272-4906

Email: brian.callaghan@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 January 15, 2021 for

U.S. Trademark Application Serial No. 90050522

 

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. 

 

 

/Brian P. Callaghan/

Trademark Examining Attorney

Law Office 108

Phone: (571) 272-4906

Email: brian.callaghan@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 January 15, 2021, 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.”