To: | Marquis Business Systems, LLC (kobrashredders@aol.com) |
Subject: | U.S. Trademark Application Serial No. 90123740 - KOBRA - N/A |
Sent: | February 01, 2021 08:59:58 PM |
Sent As: | ecom103@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90123740
Mark: KOBRA
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Correspondence Address:
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Applicant: Marquis Business Systems, LLC
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Reference/Docket No. N/A
Correspondence Email Address: |
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FINAL 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) and/or Electronic System for Trademark Trials and Appeals (ESTTA). A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action.
Issue date: February 01, 2021
This Office action is in response to applicant’s communication filed on January 13, 2021.
In a previous Office action dated December 22, 2020, the trademark examining attorney refused registration of the applied-for mark based on the following: Trademark Act Sections 1 and 45 for a failure to show the applied-for mark in use in commerce with any of the specified goods. In addition, applicant was required to satisfy the following requirement: amend the identification of goods and/or services, and adhere to the multiple-class application requirements if applicable.
Based on applicant’s response, the trademark examining attorney maintains and now makes FINAL the refusal and requirements in the summary of issues below. See 37 C.F.R. §2.63(b); TMEP §714.04.
SUMMARY OF ISSUES MADE FINAL that applicant must address:
SECTIONS 1 AND 45 REFUSAL – SPECIMEN OF RECORD IS MERE ADVERTISING
Specimen not properly verified. The refusal to register the applied-for mark in International Class 16 is now made final because applicant failed to provide in response to the refusal a properly verified specimen showing the mark as actually used in commerce for applicant’s goods. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a), 2.63(b); TMEP §§904, 904.07(a), 1301.04(g)(i).
An application based on Trademark Act Section 1(a) must include a specimen, properly verified, 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, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).
Applicant was previously refused registration and required to submit a verified substitute specimen in International Class 16 to show use of the applied-for mark in commerce because the original specimen was mere advertising for applicant’s goods. In response to each refused international class, applicant provided a substitute specimen that does appear to show use of the applied-for mark in commerce but is not verified. The USPTO does not accept materials submitted as specimens without proper verification. See 37 C.F.R. §§2.34(a)(1), 2.59(a)-(b)(1), 2.76(b)(2); In re Adair, 45 USPQ2d 1211, 1212 n.2 (TTAB 1997).
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).
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 final specimen refusal by satisfying one of the following for each applicable international class:
(1) Submit a verification of the previously submitted substitute specimens, attesting that it 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. 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) Submit a different and properly verified 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. The substitute specimen cannot be accepted without the verified statement referenced in (1).
(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.
IDENTIFICATION OF GOODS REQUIREMENT
Applicant did not respond to this requirement; therefore, it is continued and made final for the reasons stated below.
In general, commas should be used in an identification (1) to separate a series of related items identified within a particular category of goods, (2) before and after “namely,” and (3) between each item in a list of goods or services following “namely” (e.g., personal care products, namely, body lotion, bar soap, shampoo). Id. Semicolons generally should be used to separate a series of distinct categories of goods within an international class (e.g., personal care products, namely, body lotion; deodorizers for pets; glass cleaners). Id.
Further, the wording “shredders, disintegrators, degaussers” in the identification of goods must be clarified because it is too broad and could include goods in other international classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. In particular, this wording could encompass “shredders for industrial use” and “disintegrators for chemical processing” in Class 7, “degaussers” in Class 9, and “paper shredders and CD shredders for office use” in Class 16.
Applicant may substitute the following wording, if accurate:
Class 7: Document, media and solid state device
destruction equipment, namely, Including but not limited to shredders for industrial use and shredding
machines other than paper shredders for offices, Disintegrators, Degaussers.; Equipment utilized to destroy documents, and media such as but not limited to in the
nature of optical media, and electronic devices to the point where information cannot be
retrieved, namely, equipment for destruction of devices with electronic components that contain sensitive information in the nature of crushing machines and shredding machines for
industrial use
Class 9: Degaussers
Class 16: Paper shredders and CD shredders for office use
Wording in bold text indicates additions. Wording in bold text,
in italics, and {in brackets} indicates that applicant must provide additional information. Deleted text is in bold, in italics, and struck
through.
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.
MULTIPLE-CLASS APPLICATION REQUIREMENTS ADVISORY
The fee for adding classes to a TEAS Standard application is $350 per class. See 37 C.F.R. §2.6(a)(1)(iii). For more information about adding classes to an application, see the Multiple-class Application webpage.
The application references goods based on use in commerce in potentially more than one international class; therefore, 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 3 classes; however, applicant submitted a fee sufficient for only 1 class. 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 verified specimen of record is not acceptable for any international class. See more information about specimens.
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).
(5) Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods 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.
ADVISORY: APPLICANT MAY WANT TO SEEK TRADEMARK COUNSEL
Because of the legal technicalities and strict deadlines of the trademark application process, applicant is encouraged to hire a private attorney who specializes in trademark matters to assist in this process. The assigned trademark examining attorney can provide only limited assistance explaining the content of an Office action and the application process. USPTO staff cannot provide legal advice or statements about an applicant’s legal rights. TMEP §§705.02, 709.06. See Hiring a U.S.-licensed trademark attorney for more information.
How to respond. Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).
/Ray Harmon/
Trademark Examining Attorney
Law Office 103
United States Patent & Trademark Office
raymond.harmon@uspto.gov
(571) 272-0386
RESPONSE GUIDANCE