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:  December 15, 2020

 

Introduction

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issues below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

  

Search Results

 

The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting marks that would bar registration under Trademark Act Section 2(d).  15 U.S.C. §1052(d); TMEP §704.02.

 

Advisory: Summary of Issues

 

1.      Refusal: Specimen Not Accepted

2.      Refusal: Webpage Specimen Does Not Include Date Printed or Accessed

3.      Requirement: Explanation of the Mark’s Significance

4.      Requirement: Identification of Goods

5.      Requirement: Request for Information Regarding Applicant’s Use in Commerce that may lawfully be regulated by the U.S. Congress

6.      Advisory: Response Guidelines

 

Refusal: Specimen Not Accepted

 

Specimen does not show use of the mark in commerce.  Registration is refused because the specimen does not show the applied-for mark as actually used in commerce in International Class 012.  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).  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 goods identified in the application or amendment to allege use.  15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a). 

 

Specifically, the specimens of record show use of the mark with prices in Canadian dollars, e.g. “C$2,479.00” See TICRS 08/19/2020 at 3; Canadian website “bestbuy.ca/[…]” See TICRS 08/19/2020 at 4; “smartweel.ca/[…]” “Price: C$2,479.00”  See TICRS 08/19/2020 at 5. Thus, the specimens of record indicate that the mark may not be in use in commerce that "may lawfully be regulated by Congress.” 37 C.F.R. §2.61(b); TMEP §814, 901.04.

 

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).  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 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.

 

Applicant must also respond to the following additional refusal.

 

Refusal: Webpage Specimen Does Not Include Date Printed or Accessed

 

Webpage specimen does not include required URL and/or date printed/accessed.  Registration is refused because the specimen is not acceptable as a webpage specimen; it lacks the required date printed or accessed.  See 37 C.F.R. §2.56(c); TMEP §§904.03(i), 1301.04(a).  Thus, it is unclear whether the specimen shows 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 goods and 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).

 

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).  Because the webpage specimen lacks the associated URL and/or access or print date on it, within the TEAS form used to submit the specimen, or in a verified statement in a later-filed response, it is unacceptable to show use of the mark in commerce.  TMEP §§904.03(i), 1301.04(a).

 

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). 

 

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 URL of the original webpage specimen and the date it was accessed or printed.

 

(2)        Submit a different specimen (a verified “substitute” specimen), including the URL and date accessed/printed directly on the specimen itself or in a separate statement, 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.  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 or prior to the filing of the amendment to allege use.”

 

(3)        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.

 

Although the trademark examining attorney has refused registration, applicant may respond to the refusals to register by submitting evidence and arguments in support of registration.

 

If the applicant chooses to respond to the refusals to register, the applicant must also respond to the following requirements.

 

Requirement: Explanation of the Mark’s Significance

 

To permit proper examination of the application, applicant must provide the following information:

 

(1)  Explain whether the wording “ENVO” in the mark has any meaning or significance in the industry in which the goods are manufactured or provided, any meaning or significance as applied to applicant’s goods, or if such wording is a term of art within applicant’s industry. 

 

(2)  Explain whether this wording identifies a geographic place or has any meaning in a foreign language. 

 

(3)  Submit an English translation of all foreign wording in a mark.  If the wording does not have meaning in a foreign language, applicant should so specify.   

 

The format for an English translation and transliteration:  “The English translation of “ENVO” is “[specify translation]”.    

 

The format for when there is no English translation or meaning of the transliteration:  “The wording “ENVO” has no meaning in a foreign language.”

 

See 37 C.F.R. §§2.32(a)(9)-(a)(10), 2.61(b); TMEP §§809-809.03, 814. 

 

Failure to comply with a request for information is grounds for refusing registration.  In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.

 

Requirement: Identification of Goods

THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE GOODS SPECIFIED THEREIN

 

The identification of goods needs clarification because it does not identify the goods with enough specificity and it is too broad because it may identify goods in multiple International Classes.  See TMEP §§1402.01, 1402.03. 

 

For example, the identification for “kits” (i.e. “Electric scooter conversion kits for making structural changes to the scooter”) in International Class 012 is indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §§1401.05(a), 1402.01, 1402.03.  Kits generally consist of a group of components that (1) share a common theme, or (2) are used to make a particular product.  See TMEP §1401.05(a).  Applicant must amend the identification to list the components and clarify the product being made, using the guidelines below.  See id.

 

For kits consisting of a group of components that share a common theme, the identification should specify the theme followed by the wording “comprising” or “comprised of” and a list of the components that make up the kit, with all of the components in the predominant class listed first.  See id.  Generally, a kit is classified in the same international class as the majority of the components in the kit.  See id.  For example, “nail care kits comprised of nail polish, nail polish remover, false nails, nail files, and printed instructions” are in International Class 3, the class of the kits’ primary components which are listed first in the kits’ components (with “nail files” in International Class 8, and “printed instructions” in International Class 16 listed after the International Class 3 components).

 

If there are no components that are more dominant than another in a shared-theme kit, the first component listed after the wording “comprising” or “comprised of” will determine the class of the kit.  See id.  For example, “tool kits comprising hand saws and power-driven saws” are in International Class 8 (the class for “hand saws”), and “tool kits comprising power-driven saws and hand saws” are in International Class 7 (the class for “power-driven saws”).

 

For kits that make a particular product, the identification must specify the product being made using the following format:  “kits for making [specify item] comprising [specify components]” or “kits for making [specify item] comprised of [specify components].”  See id.  Generally, this type of kit is classified in the international class of the product being made.  For example, “kits for making wine consisting of fresh grapes and chemicals for fermenting wine” are classified in International Class 33 (the class for “wine”).

 

For examples of other acceptable identifications for kits (e.g., sewing kits, face painting kits), please see the USPTO’s U.S. Acceptable Identification of Goods and Services Manual (ID Manual).

 

In addition, the wording “JETSKI” in the identification of goods is a registered mark not owned by applicant; accordingly, applicant must amend the identification to delete this wording and, if not already included in the identification, provide the common commercial or generic name of the goods.  TMEP §1402.09; see 37 C.F.R. §2.32(a)(6); Camloc Fastener Corp. v. Grant, 119 USPQ 264, 264 n.1 (TTAB 1958).  See the attached U.S. Registration No. 4535236. 

 

Identifications of goods should generally be comprised of generic everyday wording for the goods, and exclude proprietary or potentially-proprietary wording.  See TMEP §§1402.01, 1402.09.  A registered mark indicates origin in one particular party and so may not be used to identify goods or services that originate in a party other than that registrant.  TMEP §1402.09 (citing Camloc Fastener Corp. v. Grant, 119 USPQ at 264 n.1). 

 

Applicant may replace such wording with the following, if appropriate:  “personal jet boats.”

 

If accurate, applicant may adopt the following formulation for drafting an acceptable identification. The suggested language has been bolded for applicant’s convenience.

 

Class 012:       Vehicles, namely, electric delivery tricycles and cycles in the nature of bicycles, tricycles, ebikes and etrikes; Motor scooters; Mobility scooters; Motorized mobility scooters; Non-motorized push scooters; Motorized personal mobility scooters; Electrically-powered motor scooters; Motor scooters and structural parts therefor; Push scooters and structural parts therefor; Storage racks specially adapted for mobility scooters; Electric bicycles; Folding electric bicycles; Motorized bicycles; Mountain bicycles; Snowmobiles and structural parts therefor; Bicycles, [please specify type of bikes, e.g. mini bikes], [please specify type of bikes, e.g. bicycles] with an auxiliary motor, electric bicycles, folding bikes, mopeds, electric mopeds, motorcycles, electric motorcycles, motorcycles with alternative power source; cars, cars with alternative power source, electric cars; electric motors for bicycles, bike accessories, namely, [specify type of bicycle bags, e.g. “pannier bags for bicycles” or “fitted bicycle covers”], bicycle saddles; Electric scooter conversion kits for making structural changes to the scooter, namely, [specify kit components by common commercial name per instructions above]; Ski bikes; Snow bikes; Snow scooters; Motor sleds namely, [specify type of motor sleds in Class 012 by common commercial name]; self-propelled utility terrain vehicles (UTVs) for snow removal; Velomobile bodies, namely, specially adapted for weather protection shells for use on bicycles, scooters and adult tricycles; Self balancing electric scooters; enclosure for small vehicles namely, [specify type of enclosure for small vehicles in Class 012 by common commercial name]; operator enclosures for vehicles namely, [specify in Class 012 by common commercial name] and structural component parts therefor; Light aircraft; All-Terrain Land Vehicles (ATVs); Electrically-powered skateboards namely, electronically motorized skateboards; Wheelchairs; adaptive mobility scooters; Self-driving mobility robots in the nature of robotic transport vehicles for indoor use; Water bikes; Kayaks; Boats; Recreational watercraft, namely, kayaks, canoes, paddleboards, pedal boats, fishing boats and dinghies; personal jet boats

 

 

TMEP §1402.01.

 

Advisories

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

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.

 

Requirement: Request for Information Regarding Applicant’s Use in Commerce that may lawfully be regulated by the U.S. Congress

 

It is the responsibility of the applicant and the applicant’s attorney to determine whether an assertion of use in commerce is supported by the relevant facts.  The examining attorney will normally accept the applicant’s verified claim of use in commerce without investigation into whether the use referred to constitutes "use in commerce."  TMEP §901.04.

 

That said, applicant’s specimens of record appear to show use in commerce in Canada as opposed to use in commerce that can be regulated by the U.S. Congress. Thus, the applicant has not met the statutory requirement for a verified statement that the mark is in use in commerce, and a specification of the date of first use in commerce, as defined in §45 of the Trademark Act.  Accordingly, the examining attorney must advise the applicant that it appears that the mark is not in use in a type of commerce that can be regulated by the U.S. Congress and must require that the applicant either submit a verified statement that "the mark is in use in commerce that can be regulated by the U.S. Congress," or amend the basis of the application to a bona fide intention to use the mark in commerce under §1(b) of the Act, if permitted by 37 C.F.R. §2.35.  See TMEP §806.03(c) regarding amendment of the basis from §1(a) to §1(b).  TMEP §901.04.

 

Consequently, the examining attorney must ask the applicant whether there is use in commerce that may lawfully be regulated by the U.S. Congress and require a satisfactory explanation or showing of such use.  The examining attorney may also require additional information or evidence concerning the use of the mark to permit full consideration of the issue.  37 C.F.R. §2.61(b); TMEP §§814, 901.04.

 

Applicant must respond to the following:

 

1. Are applicant’s in use in commerce that may lawfully be regulated by the U.S. Congress?

 

2. Please provide additional information to explain that applicant’s goods are in use in commerce that may lawfully be regulated by the U.S. Congress.

 

3. Please provide evidence to demonstrate that applicant’s goods are in use in commerce that may lawfully be regulated by the U.S. Congress.

 

4. Please explain how applicant’s goods are used in commerce that may lawfully be regulated by the U.S. Congress.

 

See 37 C.F.R. §2.61(b); TMEP §§814, 901.04.  

 

Failure to comply with a request for information is grounds for refusing registration.  In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.  Merely stating that information about the goods or services is available on applicant’s website is an insufficient response and will not make the relevant information of record.  See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).

 

Advisory: Response Guidelines

 

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

 

/Gilbert M. Swift/

Trademark Examining Attorney

Law Office 109

Tel. 1+(571) 272-9028

Gilbert.Swift@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.