Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

FINAL OFFICE ACTION

 

 

Issue date:  November 29, 2021

 

Notice of Incomplete Response to a Final Office Action – Additional Time Granted to Resolve Issues

 

Deadline for responding to this notice.  To avoid abandonment of this application, the USPTO must receive one or both of the following submissions within the stated timeframe: 

 

(1)        File a complete response to the outstanding issues listed below that the USPTO receives within (1) thirty days of the issue date above, or (2) the time remaining in the six-month period for responding to the previous Office action, whichever is longer; and/or

 

(2)        File a notice of appeal that the Trademark Trial and Appeal Board receives within six months from the issue date of the previous final Office action.  This notice of incomplete response does not extend the time for filing an appeal. 

 

See 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a)(2); TMEP §§715.03(a)(ii)(C), 718.03(b). 

 

Applicant granted additional time to resolve outstanding issues.  On October 21, 2021, applicant filed a timely request for reconsideration that did not resolve all the issues in the April 21, 2021 final Office action.  Because applicant made a bona fide attempt to advance the examination of the application in the response in compliance with 37 C.F.R. §2.65(a)(2), applicant is being granted additional time to address the following refusals and/or requirements in the previous Office action: 

 

            • Ornamental Refusal

            • Specimen not properly verified

 

These refusal(s) and/or requirement(s) are maintained and continued.  See TMEP §713.02. 

 

Please note that the applicant’s response did not include the required substitute specimen.  As previously noted, the provided specimen merely shows the applied-for mark, “DREAM. DEFY. DELIVER,” located directly on the upper-center area of the back of the shirt, where ornamental elements often appear. See TMEP §1202.03(a), (b). The mark is displayed in a relatively large size on the clothing such that it dominates the overall appearance of the goods. Lastly, the applied-for mark appears to be a slogan that is used in a merely decorative manner that would be perceived by consumers as having little or no particular source-identifying significance. Consumers would view the applied-for mark as a decorative or ornamental feature of the goods, rather than as a trademark to indicate the source of applicant’s goods and to distinguish them from others.

 

Applicant is again advised that it may overcome this refusal by satisfying one of the following options:

 

(1) Submit a different specimen (a verified “substitute” specimen) that 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 that shows proper trademark use for the identified goods in International Class 25. Examples of acceptable specimens that show non-ornamental use on clothing include hang tags and labels used inside a garment.

 

(2) Amend to the Supplemental Register, which is a second trademark register for marks not yet eligible for registration on the Principal Register, but which may become capable over time of functioning as source indicators.

 

(3) Claim acquired distinctiveness under Trademark Act Section 2(f) by submitting evidence that the applied-for mark has become distinctive of applicant’s goods; that is, proof that applicant’s extensive use and promotion of the mark allowed consumers now directly to associate the mark with applicant as the source of the goods.

 

(4) Submit evidence that the applied-for mark is an indicator of secondary source; that is, proof that the mark is already recognized as a source indicator for other goods or services that applicant sells/offers.

 

(5) Amend the filing basis to intent to use under Section 1(b). This option will later necessitate additional fee(s) and filing requirements.

 

Further, with respect to verifying a substitute specimen, verification of the previously submitted substitute specimen, the following statement must be 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 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 may view this notice and the previously issued final Office action in the Trademark Status and Document Retrieval (TSDR) system.

 

 

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).

 

 

/IngridCEulin/

Ingrid C. Eulin

Examining Attorney

Law Office 111

571-272-9380

Ingrid.Eulin@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 November 29, 2021 for

U.S. Trademark Application Serial No. 90182944

 

A USPTO examining attorney has reviewed your trademark application and issued an Office action.  You must respond to this Office action in order to avoid your application abandoning.  Follow the steps below.

 

(1)  Read the Office action HERE.  This email is NOT the Office action.

 

(2)  Respond to the Office action by the deadline using the Trademark Electronic Application System (TEAS).  Your response must be received by the USPTO on or before 11:59 p.m. Eastern Time of the last day of the response period.  Otherwise, your application will be abandoned.  See the Office action itself regarding how to respond.

 

(3)  Direct general questions about using USPTO electronic forms, the USPTO website, the application process, the status of your application, and whether there are outstanding deadlines to the Trademark Assistance Center (TAC).

 

After reading the Office action, address any question(s) regarding the specific content to the USPTO examining attorney identified in the Office action.

 

 

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 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 may mail or email you trademark-related offers and notices – most of which require fees.  The USPTO will only email official USPTO correspondence from the domain “@uspto.gov.”

 

·         Hiring a U.S.-licensed attorney.  If you do not have an attorney and are not required to have one under the trademark rules, we encourage you to hire a U.S.-licensed attorney specializing in trademark law to help guide you through the registration process.  The USPTO examining attorney identified above is not your attorney and cannot give you legal advice, but rather works for and represents the USPTO in trademark matters.