To: | Express Messenger Systems, Inc. (frank@schwartz-cera.com) |
Subject: | U.S. Trademark Application Serial No. 90119611 - ONTRAC - N/A |
Sent: | September 30, 2020 12:29:32 PM |
Sent As: | ecom116@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90119611
Mark: ONTRAC
|
|
Correspondence Address:
|
|
Applicant: Express Messenger Systems, Inc.
|
|
Reference/Docket No. N/A
Correspondence Email Address: |
|
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 30, 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 Issues that the Applicant Must Address
1) Registration is Refused – Additional Information is Required About the Specimens of Use
2) Amended Identification of Services is Required
REGISTRATION IS REFUSED – ADDITIONAL INFORMATION IS REQUIRED ABOUT THE SPECIMENS OF USE
Webpage specimens do not include required URLs and/or dates printed/accessed. Registration is refused because the specimens are not acceptable as a webpage specimens; they lack the required URL and/or date printed/accessed. See 37 C.F.R. §2.56(c); Mandatory Electronic Filing & Specimen Requirements, Examination Guide 1-20, at V.B. (Rev. Feb. 2020). The specimens thus appear to be in the nature of a digital mockup that fails to show the applied-for mark in actual use in commerce. See 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, 904.03(g), 904.07(a). 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. 15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).
A webpage submitted as a specimen must include the URL and access or print date to show actual use in commerce. 37 C.F.R. §2.56(c). Because the webpage specimens lack the associated URL and/or access or print date on them, within the TEAS form used to submit the specimen, or in a verified statement in a later-filed response, they are unacceptable to show use of the mark in commerce.
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).
Response options. Applicant may respond to this refusal by satisfying one of the following for each applicable international class:
(1) Submit a verified statement, in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20 or 28 U.S.C. §1746, specifying the URLs of the original webpage specimens and the dates they were accessed or printed.
(2) Submit a different specimen (a verified “substitute” specimen), including the URL and date accessed/printed on it, that (a) was in actual use in commerce at least as early as the filing date of the application and (b) shows the mark in actual use in commerce for the services identified in the application. Applicant must also submit 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.”
(3) Amend the filing basis to intent to use under Section 1(b) 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.
AMENDED IDENTIFICATION OF SERVICES IS REQUIRED
A. International Class 35
The services identified in this international class are acceptable as worded.
B. International Class 39
The wording “supply chain logistics and reverse logistics services, namely arranging for warehousing services, transportation and delivery of documents, packages, freight and parcels by air and truck” in the identification of services must be clarified because it is too broad and could include services in other international classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. In particular, this wording could encompass “supply chain logistics and reverse logistics services, namely, transportation and delivery of documents, packages, freight and parcels for others by air, and truck” and “warehousing services” in International Class 39, and “arranging delivery and transportation of documents, packages, freight and parcels by air and truck” in International Class 35.
The applicant may adopt the following amended identification of services, if accurate:
International Class 35: Mail services consisting of receiving, sorting and handling of packages and letters; mail services consisting of arranging for pickup and delivery of packages and letters via ground; arranging for pickup, delivery, storage and transportation by others of documents, packages, freight and parcels by air and truck; arranging delivery and transportation of documents, packages, freight and parcels by air and truck; arranging for pickup, shipping, and delivery of packages and letters by others via various modes of transportation.
International Class 39: Transportation brokerage services; supply chain logistics and reverse logistics services, namely, transportation and delivery of documents, packages, freight and parcels for others by air, and truck; warehousing services, namely, storage, distribution and packing for shipment of goods, packages, documents and freight for others; shipping and delivery services, namely, pickup and delivery of packages and letters by various modes of transportation.
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. See TMEP §1402.04.
ASSISTANCE
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.
SEARCH RESULTS
RESPONSE TO OFFICE ACTION
How to respond. Click to file a response to this nonfinal Office action.
/Tina L Snapp/
Examining Attorney
Law Office 116
571-272-9224
Informal Email Tina.Snapp@uspto.gov
RESPONSE GUIDANCE