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 16, 2021

 

 

 

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 OF USPTO DATABASE OF MARKS

 

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.

 

SUMMARY OF ISSUES

 

The applicant must address:

 

• Specimen Refusal
• Additional Information Regarding Goods Required
• Disclaimer Required
• Entity Clarification Required
• Clarification of Color in the Mark and Description of the Mark Required

 

SPECIMEN REFUSAL

 

Digitally created or altered image or mockup is not an acceptable specimen.  Registration is refused because the specimen appears to consist of a digitally created or altered image or a mockup of a depiction of the mark on the goods or their packaging and does not show the applied-for mark as actually used in commerce in International Class 29.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a), (c); TMEP §§904.04(a), 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).  “Use in commerce” means (1) a bona fide use of the applied-for mark in the ordinary course of trade (and not merely to reserve a right in the mark), (2) the mark is placed in any manner on the goods, packaging, tags or labels affixed to the goods, or displays that directly associate the mark with the goods and have a point-of-sale nature, and (3) the goods are actually sold or transported in commerce.  See 15 U.S.C. §1127.

 

An image of a product or packaging that has been digitally created or altered to include the mark or a mockup of how the mark may be displayed on the product or packaging is not a proper specimen for goods because it does not show actual use of the mark in commerce.  See 15 U.S.C. §1127; 37 C.F.R. §2.56(c); TMEP §904.04(a).

 

In this case, the specimen submitted appears to show a page of different labels showing a mockup of how the applicant intends to use the applied-for mark in commerce but does not show the labels either on the goods or printed in association with the goods.  Therefore, the specimen does not show actual use of the mark in commerce. 

 

Response options.  Applicant may respond to the specimen refusal by satisfying one of the following options 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.  For instructions on how to submit a different specimen using the online Trademark Electronic Application System (TEAS) form, see the Specimen webpage.

 

(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.

 

If applicant submits an acceptable verified substitute specimen or amends to Section 1(b), the requirement below for additional information/documentation about the original specimen will be withdrawn.  The requirement below as to the original specimen will be made final if applicant submits a substitute specimen that is not acceptable or does not amend to Section 1(b), and does not also respond completely to the requirement below.

 

Additional information/documentation about original specimen(s) required.  To permit proper examination of the application record for compliance with use in commerce requirements, applicant must respond to the following requests for information and documentation about the specimen(s).  See 37 C.F.R. §2.61(b); TMEP §814.  A specimen must show the mark as actually used in commerce, which means use in the ordinary course of trade, and not merely to reserve a right in the trademark.  15 U.S.C. §§1051, 1052, 1127.  Because the specimen of record appears to be digitally created or altered, or is a mockup, further information is necessary to determine whether the specimen is in actual use in commerce. 

 

Answer for each specimen/photograph/image previously provided.  For any website source, provide a digital copy of the entire webpage from top to bottom, as rendered in an Internet browser, that includes the URL and access or print date.  TMEP §710.01(b) (citing In re I-Coat Co., 126 USPQ2d 1730, 1733 (TTAB 2018)). 

 

(1)        Identify the particular good(s) listed in the application for which the specimen(s) was submitted to show use of the mark.

 

(2)        Explain whether the specimen was created for submission with this application.  If so, specify the date each specimen was created.  If applicant used the image(s) of the goods shown in the specimen(s) from a third-party website, provide the URL of the website and a digital copy of relevant webpage(s) for each image.

 

(3)        Provide information about and examples of how applicant’s goods appear in the actual sales environment.

(a)        If sold in stores, provide a representative sample of the name(s) of the stores and of photographs showing the goods for sale in the named stores, such as photographs of the sales displays or goods on shelves with the mark. 

(b)        If sold online, provide a representative sample of the name(s) of the online retailers, the website URL(s) for each named retailer, and a digital copy of the webpages showing the goods for sale on the named website.

(c)        If sold in another type of sales environment (e.g., catalogs, trade shows), identify the environment and provide photographs and/or documentation showing the goods for sale in that environment. 

 

(4)        If the information in question (3) about how the goods appear in the actual sales environment is not available to applicant, please describe how applicant’s goods are sold or transported and provide photographs and other documentation showing how applicant’s mark appears on the goods and/or its packaging when the goods are sold or transported to or within the United States.

 

(5)        For each category of sales environment specified in response to questions (3) and (4), specify when the goods bearing the mark were first available for purchase within the United States, the date of the first sale of the goods to or within the United States, and whether the goods are still for sale to or within the United States in that environment.

 

(6)        For the goods identified in response to question (1), provide documentation that shows payment or other consideration made for the goods, redacting personal or private information of buyers as necessary.

 

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

 

DISCLAIMER REQUIRED

 

Applicant must disclaim wording “SOUTH FLORIDA LOCAL JERKY” and the design of the map of Florida because it is merely descriptive and primarily geographically descriptive of applicant’s goods.

 

The nondistinctive wording “LOCAL JERKY” merely describes an ingredient, quality, characteristic, and feature of applicant’s goods.  See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a). 

 

In this case, the attached evidence from the American Heritage Dictionary shows the wording “local” means “[o]f, relating to, or characteristic of a particular place” and therefore merely describes a feature, characteristic, and quality of the applicant’s goods, which include jerky made locally in South Florida.  See attached evidence.  

 

Additionally, the wording “jerky” appears in applicant’s identification of goods.  Furthermore, the attached evidence from the American Heritage Dictionary shows the wording “jerky” means “Meat cured by jerking”.  See attached evidence.  Therefore, this word merely describes an ingredient, feature, and characteristic of applicant’s goods, which include jerky. 

 

In addition, the wording “South Florida” and the design of the map of Florida is primarily geographically descriptive of the geographic location of where applicant’s goods originated.  See 15 U.S.C. §1052(e)(2); In re Societe Generale des Eaux Minerales de Vittel S.A., 824 F.2d 957, 959, 3 USPQ2d 1450, 1451-52 (Fed. Cir. 1987); TMEP §§1210.01(a), 1213, 1213.03(a), (c). 

 

A design of geographical matter, and the word or words that describe the design are legal equivalents; therefore, a design must be disclaimed the same as geographically descriptive wording.  See In re Can. Dry Ginger Ale, Inc., 86 F.2d 830, 832, 32 USPQ 49, 50 (C.C.P.A. 1936); TMEP §1210.02(a), 1213.03(c).  In this case, the design of the map of Florida is the legal equivalent of the geographic place or location named Florida.  The attached evidence from the Columbia Gazetteer shows that Florida is a generally known geographic place or location.  See TMEP §§1210.02 et seq.  The goods for which applicant seeks registration originate in this geographic place or location as shown by applicant’s address listed in the application.  See TMEP §1210.03.  Because the goods originate in this place or location, a public association of the goods with the place is presumed.  See In re Hollywood Lawyers Online, 110 USPQ2d 1852, 1858 (TTAB 2014) (citing In re Spirits of New Merced, LLC, 85 USPQ2d 1614, 1621 (TTAB 2007)); TMEP §§1210.02(a) 1210.04. 

 

Additionally, the attached evidence from Wikipedia shows that South Florida is a generally known geographic place or location.  See TMEP §§1210.02 et seq.  The goods for which applicant seeks registration originate in this geographic place or location as shown by the applicant’s address.  See TMEP §1210.03.  Further, when the geographical significance of a term is its primary significance, and the geographical place is neither obscure nor remote, a public association of the goods and/or services with the place is presumed if an applicant’s goods originate in the place named in the mark.  In re Hollywood Lawyers Online, 110 USPQ2d 1852, 1858 (TTAB 2014) (citing In re Spirits of New Merced, LLC, 85 USPQ2d 1614, 1621 (TTAB 2007)); TMEP §1210.04.

 

Applicant may respond to this issue by submitting a disclaimer in the following format:

 

No claim is made to the exclusive right to use the design of the map of Florida and “SOUTH FLORIDA LOCAL JERKY” apart from the mark as shown.

 

For an overview of disclaimers and instructions on how to provide one using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.

 

ENTITY CLARIFICATION REQUIRED

 

The name of an individual person appears in the section of the application intended for the trademark owner’s name; however, the legal entity is set forth as a limited liability company.  Applicant must clarify this inconsistency.  See 37 C.F.R. §§2.32(a)(2), (a)(3)(i)-(ii), 2.61(b); TMEP §803.02(a). 

 

If applicant is an individual, applicant should simply request that the legal entity be amended to “individual” and must indicate his/her country of citizenship for the record.  37 C.F.R. §2.32(b)(3)(i); TMEP §803.03(a).  Alternatively, if applicant is a limited liability company, applicant must provide the correct name of the limited liability company and the U.S. state or foreign country of incorporation or organization.  37 C.F.R. §2.32(a)(3)(ii); TMEP §803.03(h).

 

If, in response to the above request, applicant provides information indicating that it is not the owner of the mark, registration may be refused because the application was void as filed.  See 37 C.F.R. §2.71(d); TMEP §§803.06, 1201.02(b).  An application must be filed by the party who owns or is entitled to use the mark as of the application filing date.  See 37 C.F.R. §2.71(d); TMEP §1201.02(b).

 

CLARIFICATION OF COLOR IN THE MARK AND DESCRIPTION OF THE MARK REQUIRED

 

Applicant must clarify whether color is a feature of the mark because, although the drawing shows the mark in color, the application does not state whether color is a feature of the mark.  37 C.F.R. §§2.37, 2.52(b)(1), 2.61(b); see TMEP §807.07(a)-(a)(ii).

 

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.  Applicant must also submit a revised description of all literal and design elements in the mark, deleting any reference to color, if appropriate.  37 C.F.R. §2.37; see TMEP §§808.01, 808.02.  The following description is suggested, if accurate:  The mark consists of the stylized wording “SOUTH FLORIDA LOCAL JERKY” within a circle, with the wording “SOUTH FLORIDA” appearing above the wording “LOCAL JERKY”.  Between the wording “SOUTH FLORIDA” and “LOCAL JERKY” is an image of a map of the Florida State with an image of a stylized sun and a palm tree on it.

 

(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 colors white, black, and red are claimed as a feature of the mark.”

 

Description:  “The mark consists of a circle with a black outline and a white center with the stylized wording “SOUTH FLORIDA LOCAL JERKY” in bubble letters with the outline in black and the inside in white within the circle.  The wording “SOUTH FLORIDA” appears above the wording “LOCAL JERKY”.  Between the wording “SOUTH FLORIDA” and “LOCAL JERKY” is an image of a map of the Florida State with a black outline and a white center.  To the left of the center of the map and partially overlapping the map is an image of a stylized sun made out of red and white stripes and a palm tree in black on it.”

 

See TMEP §807.07(b).

 

HIRING AN ATTORNEY ADVISORY

 

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. 

 

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.

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06. 

 

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. 

 

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

 

 

/Sarah C. Hopkins/

Sarah Hopkins

Examining Attorney

Trademark Office 123

(571) 270-0942

sarah.hopkins@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 16, 2021 for

U.S. Trademark Application Serial No. 90165364

 

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. 

 

 

/Sarah C. Hopkins/

Sarah Hopkins

Examining Attorney

Trademark Office 123

(571) 270-0942

sarah.hopkins@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 16, 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.”