Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

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:  September 21, 2021

 

This Office action is in response to applicant’s communication filed on August 18, 2021.

 

In the first action, the examining attorney refused registration under Trademark Act Sections 1, 2, 2(a), 2(d), 3 and 45. Additionally, the examining attorney required applicant to submit acceptable specimens for its goods.In its response, the applicant argued against the refusal and submitted new specimens.

 

The specimen is acceptable for Class 025 only.

 

FINAL 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

 

For the reasons set forth below, the refusal under Trademark Act Section 2(d) is now made FINAL with respect to U.S. Registration No(s). 3162973 and 3692571.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.63(b).

 

In the first action, the examining attorney refused registration of the applied-for mark because of a likelihood of confusion with the marks in U.S. Registration Nos. 3162973 and 3692571.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. 

 

Facts

 

Applicant’s mark is FREE BRITNEY for “Pictures; Posters; Stickers,” in Class 016 and “Coats; Footwear; Headwear; Sweatshirts; Undergarments; Bottoms as clothing; Hoodies; Tops as clothing,” in Class 025.

 

Registrant’s marks are:

 

BRITNEY (U.S. Registration No. 3162973) for “posters,” in Class 016 and “Headwear; shirts; and T-shirts, sweatshirts,” in Class 025 (see registration for full listing of goods).

 

BRITNEY SPEARS (U.S. Registration No. 3692571) for “On-line retail store services featuring music, apparel, general consumer merchandise, memorabilia, paper products, [ tour books, baby items, patches, temporary tattoos, ornamental and novelty buttons, magnets, posters, writing utensils, plush toys, mouse pads, photos, ] key rings, charm necklaces, bags, and mugs” (the brackets indicate deleted items from the registration).

 

Mark

 

Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression.  Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v).  “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.”  In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).

 

All three marks feature the identical wording BRITNEY. Consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark.  See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (finding similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876, 23 USPQ2d 1698, 1700 (Fed Cir. 1992) (finding similarity between CENTURY 21 and CENTURY LIFE OF AMERICA in part because “consumers must first notice th[e] identical lead word”); see also In re Detroit Athletic Co., 903 F.3d 1297, 1303, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”).

 

The addition of the term FREE does not change the commercial impression of the marks. Adding a term to a registered mark generally does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d).  See Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL and BENGAL LANCER and design confusingly similar); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1269 (TTAB 2009) (finding TITAN and VANTAGE TITAN confusingly similar); In re El Torito Rests., Inc., 9 USPQ2d 2002, 2004 (TTAB 1988) (finding MACHO and MACHO COMBOS confusingly similar); TMEP §1207.01(b)(iii).  In the present case, the marks are identical in part.

 

In this case the term BRITNEY is the dominant term. Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression.  See In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).  Greater weight is often given to this dominant feature when determining whether marks are confusingly similar.  See In re Detroit Athletic Co., 903 F.3d at 1305, 128 USPQ2d at 1050 (citing In re Dixie Rests., 105 F.3d at 1407, 41 USPQ2d at 1533-34).

 

The singer BRITNEY SPEARS, commonly referred to as BRITNEY, is famous (see previously attached evidence). Accordingly, the name BRITNEY is the dominant portion of the mark. Famous marks are afforded a broad scope of legal protection because they are more likely to be remembered and associated in the public mind than a weaker mark. Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1374, 73 USPQ2d 1689, 1694 (Fed. Cir. 2005); Bose Corp. v. QSC Audio Prods. Inc., 293 F.3d 1367, 1371-76, 63 USPQ2d 1303, 1305-09 (Fed. Cir. 2002) (finding opposer’s marks, ACOUSTIC WAVE and WAVE, to be famous and thus entitled to broad protection); Recot, 214 F.3d at 1327, 54 USPQ2d at 1897 (finding Board erred in limiting the weight accorded to the fame of opposer’s FRITO-LAY mark); Kenner Parker Toys Inc. v. Rose Art Indus., Inc., 963 F.2d 350, 353, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992) (finding Board erred in discounting the significance of the fame of opposer’s mark PLAY-DOH); UMG Recordings, Inc. v. Mattel, Inc., 100 USPQ2d 1868, 1883 (TTAB 2011) (finding MOTOWN very famous in connection with musical recordings and musical entertainment, and noting that "a famous mark such as Motown can be expected to cast a long shadow and to be used in connection with numerous collateral goods").

 

When present, the fame of a mark is "a dominant factor in the likelihood of confusion analysis . . . independent of the consideration of the relatedness of the goods." Recot, 214 F.3d at 1328, 54 USPQ2d at 1898; L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1438 (TTAB 2012) (noting that "a finding that a mark enjoys significant fame expands the scope of protection which might be accorded a lesser-known mark" and that "the fame of a registered or previously used mark can never support a junior party"); Starbucks U.S. Brands, LLC v. Ruben, 78 USPQ2d 1741, 1750 (TTAB 2006) ("As the fame of a mark increases, the degree of similarity between the marks necessary to support a conclusion of likely confusion declines."); see also Nike, Inc. v. Maher, 100 USPQ2d 1018, 1023 (TTAB 2011) (finding applicant’s mark JUST JESU IT, and opposer’s mark JUST DO IT similar for likelihood of confusion purposes "despite the potential differences in meaning, given the fame of opposer’s mark and the similarity of appearance, pronunciation and overall commercial impressions"). See TMEP §1207.01(d)(ix).

 

Accordingly the marks are similar.

 

Goods/Services

 

The compared goods and/or services need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i).  They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).

 

The applicant and U.S. Registration No. 3162973 have identical goods, namely, posters, headwear and sweatshirts. Further, applicant’s goods, tops as clothing is broad enough to encompass registrant’s t-shirts.

 

U.S. Registration No. 3692571 retail services feature some of the goods listed in applicant’s identification of goods. The use of similar marks on or in connection with both products and retail-store services has been held likely to cause confusion where the evidence showed that the retail-store services featured the same type of products.  See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1051 (Fed. Cir. 2018) (holding the use of similar marks for various clothing items, including athletic uniforms, and for retail shops featuring sports team related clothing and apparel likely to cause confusion); In re Country Oven, Inc., 2019 USPQ2d 443903, at *12 (TTAB 2019) (holding the use of identical marks for bread buns and retail bakery stores and shops likely to cause confusion); In re House Beer, LLC, 114 USPQ2d 1073, 1078 (TTAB 2015) (holding the use of identical marks for beer and for retail store services featuring beer likely to cause confusion);TMEP §1207.01(a)(ii).

 

Applicant does not argue that the goods are unrelated.

 

The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer.  See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993).  Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant.  TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).

 

Accordingly, the refusal to register the applied for mark under Trademark Act Section 2(d) is continued and made FINAL.

 

FINAL 2(a) REFUSAL – FALSE CONNECTION

 

The refusal under Trademark Act Section 2(a) is now made FINAL for the reasons set forth below.  See 15 U.S.C. §1052(a); 37 C.F.R. §2.63(b).

 

Registration is refused because the applied-for mark consists of or includes matter that may falsely suggest a connection with BRITNEY SPEARS.  Trademark Act Section 2(a), 15 U.S.C. §1052(a).  Although BRITNEY SPEARS is not connected with the goods provided by applicant under the applied-for mark, BRITNEY SPEARS is so well-known that consumers would presume a connection.  See id.

 

Trademark Act Section 2(a) prohibits registration of “matter which may . . . falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols.”  15 U.S.C. § 1052(a).  To establish that an applied-for mark falsely suggests a connection with a person or an institution, the following is required:

 

(1)        The mark sought to be registered is the same as, or a close approximation of, the name or identity previously used by another person or institution.

 

(2)        The mark would be recognized as such, in that it points uniquely and unmistakably to that person or institution.

 

(3)        The person or institution identified in the mark is not connected with the goods that are sold or will be sold by applicant under the mark.

 

(4)        The fame or reputation of the named person or institution is of such a nature that a connection with such person or institution would be presumed when applicant’s mark is used on its goods.

 

In re ADCO Indus. – Techs., L.P., 2020 USPQ2d 53786, at *3 (TTAB 2020) (citing Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imps. Co., 703 F.2d 1372, 1375-77, 217 USPQ 505, 508-10 (Fed. Cir. 1983); In re Nieves & Nieves LLC, 113 USPQ2d 1639, 1643 (TTAB 2015); In re Pedersen, 109 USPQ2d 1185, 1188 (TTAB 2013)).

 

The name, BRITNEY, in the mark identifies BRITNEY SPEARS. BRITNEY or BRITNEY SPEARS is so famous that the public would reasonably assume a connection between the person and the goods or services. Further, the FREE BRITNEY movement is famous as a social media movement that’s aim is to “FREE” BRITNEY from the legally binding conservatorship she is currently under (see previously attached).

 

The fact that applicant only uses BRITNEY in its mark and not her full name does not change the unmistakably association with BRITNEY SPEARS. Britney Spears is commonly referred to by her first name (see previously attached evidence). The term at issue need not be the actual, legal name of the party falsely associated with applicant’s mark to be unregistrable under Section 2(a).  TMEP §1203.03; see, e.g., Hornby v. TJX Cos., 87 USPQ2d 1411, 1417, 1424 (TTAB 2008) (finding TWIGGY to be the nickname of professional model Lesley Hornby); Buffett v. Chi‑Chi’s, Inc., 226 USPQ 428, 429-30 (TTAB 1985) (finding MARGARITAVILLE to be the persona of singer Jimmy Buffett).  The term must, however, be so uniquely and unmistakably associated with the named party as to constitute that party’s name or identity.  TMEP §1203.03; see, e.g., In re Cotter & Co., 228 USPQ 202, 204-05 (TTAB 1985); Buffett v. Chi‑Chi’s, Inc., 226 USPQ at 429.

 

Applicant argues that there is no false association because consumers are aware that Britney Spears has no affiliation with the "Free Britney" social justice movement, as it was started completely independent from Britney Spears and as a showing of third-party support. This argument is not persuasive. The fact that applicant did not intend to adopt the name of, or trade upon the goodwill of, the named person or institution does not obviate a false connection refusal.  Trademark Act Section 2(a) does not require such intent.  TMEP §1203.03(b)(i); see, e.g., S & L Acquisition Co. v. Helene Arpels, Inc., 9 USPQ2d 1221, 1224 (TTAB 1987); Consol. Natural Gas v. CNG Fuel Sys., Ltd., 228 USPQ 752, 754 (TTAB 1985).  However, evidence of such intent is highly probative that the public will make the intended false connection.  Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imps. Co., 703 F.2d 1372, 1377, 217 USPQ 505, 509 (Fed. Cir. 1983); TMEP §1203.03(b)(i). Additionally, Britney Spears has famously spoken out about her conservatorship asking the court to free her from her conservatorship (see attached evidence).

 

While, Britney Spears may not sell “FREE BRITINEY” apparel and posters, yet, she sells apparel and posters which are branded with her name (see previously cited registrations). If applicant’s goods are of a type that the named person or institution sells or uses, and the named party is sufficiently famous, then it may be inferred that purchasers of the goods would be misled into making a false connection of sponsorship, approval, support or the like with the named party.  See, e.g., In re Nieves & Nieves LLC, 113 USPQ2d 1639, 1647-48 (TTAB 2015) (holding ROYAL KATE used with applicant’s consumer products, including fashion products, suggested a connection with Kate Middleton would be inferred because evidence showed that Kate Middleton, by virtue of being the wife of Prince William of the British Royal family, has become a celebrity and fashion trend-setter the media reports on, including the clothes she wears, what she does, and what she buys); In re Cotter & Co., 228 USPQ 202, 204-05 (TTAB 1985) (holding WESTPOINT used with applicant’s firearms suggested sponsorship, approval, support or the like from West Point because evidence showed that West Point is a well-known U.S. Military Academy).

 

Finally, the fact that purchasers would realize, at some point after purchase, that no connection exists between the listed goods and the person or institution falsely connected, is not relevant.  The focus is on “the initial reaction or impact of the mark when viewed in conjunction with the applicable goods.”  In re U.S. Bicentennial Soc’y, 197 USPQ 905, 906 (TTAB 1978) (internal punctuation omitted) (quoting In re Nat’l Intelligence Acad., 190 USPQ 570, 572 (TTAB 1976)).

 

Accordingly, the 2(a) false connection refusal is continued and made FINAL.

 

FINAL FAILURE TO FUNCTION REFUSAL

 

For the reasons set forth below, the refusal is now made FINAL under Trademark Act Sections 1, 2, and 45 for failure to function as a trademark.  See 15 U.S.C. §§1051, 1052, 1127; 37 C.F.R. §2.63(b).

 

Registration is refused because the applied-for mark is a slogan or term that does not function as a trademark or service mark to indicate the source of applicant’s goods and to identify and distinguish them from others.  Trademark Act Sections 1, 2, 3, and 45, 15 U.S.C. §§1051-1053, 1127.  In this case, the applied-for mark is a commonplace term, message, or expression widely used by a variety of sources that merely conveys an ordinary, familiar, well-recognized concept or sentiment.  See In re Wal-Mart Stores, Inc., 129 USPQ2d 1148, 1160 (TTAB 2019) (holding INVESTING IN AMERICAN JOBS not registrable for retail store services or promoting public awareness of goods made or assembled by American workers because the mark would be perceived merely as a commonly-used informational message); In re Volvo Cars of N. Am., Inc., 46 USPQ2d 1455, 1460-61 (TTAB 1998) (holding DRIVE SAFELY not registrable for automobiles and automobile parts because the mark would be perceived merely as an “everyday, commonplace safety admonition”). 

 

Terms and expressions that merely convey an informational message are not registrable.  In re Eagle Crest, Inc., 96 USPQ2d 1227, 1229 (TTAB 2010).  Determining whether the term or expression functions as a trademark or service mark depends on how it would be perceived by the relevant public.  In re Wal-Mart Stores, Inc., 129 USPQ2d at 1150 (citing D.C. One Wholesaler, Inc. v. Chien, 120 USPQ2d 1710, 1713 (TTAB 2016)); In re Eagle Crest, Inc., 96 USPQ2d at 1229; TMEP §1202.04.  “The more commonly a [term or expression] is used, the less likely that the public will use it to identify only one source and the less likely that it will be recognized by purchasers as a trademark [or service mark].”  In re Hulting, 107 USPQ2d 1175, 1177 (TTAB 2013) (quoting In re Eagle Crest, Inc., 96 USPQ2d at 1229); TMEP §1202.04(b).

 

The previously attached evidence from Insider, The New York Times, Los Angeles Times shows that this term or expression is commonly used to refer to a social media movement that’s aim is to “FREE” BRITNEY from the legally binding conservatorship she is currently under and conveys support in the movement.  Because consumers are accustomed to seeing this term or expression commonly used in everyday speech by many different sources, they would not perceive it as a mark identifying the source of applicant’s goods but rather as only conveying an informational message.

 

To be a mark, the phrase must be used in a manner calculated to project to purchasers or potential purchasers a single source or origin for the goods/. In re Volvo Cars of North America Inc., 46 USPQ2d 1455, 1459 (TTAB 1998). In light of the above, registration is refused under Trademark Act Sections 1, 2, and 45 because the applied-for mark “FREE BRITNEY” merely conveys a message and does not function as a trademark to indicate the source of applicant’s and to identify and distinguish them from others.

 

Put another way, the public would not perceive the phrase “FREE BRITNEY” as source-identifying matter that identifies applicant alone as the source of the goods but rather as an expression of support to FREE BRITNEY from her legally binding conservatorship. In other words, potential consumers would simply purchase applicant’s goods because they want to support the cause that the phrase represents, not because they believe the phrase indicates the source of such goods.

 

An applicant may not overcome this refusal by amending the application to seek registration on the Supplemental Register or asserting a claim of acquired distinctiveness under Section 2(f).  TMEP §1202.04(d); see In re Eagle Crest, Inc., 96 USPQ2d at 1229.  Nor will submitting a substitute specimen overcome this refusal.  See TMEP §1202.04(d).

 

Accordingly, the failure to function as a trademark refusal is continued and made FINAL.

 

FINAL SPECIMEN REFUSAL

 

Applicant was previously refused registration in International Class 016 and 025 because the specimen(s) appeared to consist of a digitally created or altered image or a mockup and did not show the applied-for mark as actually used in commerce.  In addition, applicant was required to furnish information/documentation about the specimen to establish that it was actually used in commerce.  Response options for overcoming that refusal were set forth in the prior Office action.  Applicant, however, responded to such refusal by submitting a substitute specimen(s) for each refused international class that does not show proper use of the applied-for mark in commerce for the reasons immediately stated below. 

 

Thus, the refusal to register the applied-for mark in International Class 016 is now made FINAL because applicant failed to provide evidence of use of the mark in commerce.  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, 1301.04(g)(i). 

 

Specimen does not show use in specific class.  Registration is refused because the specimen does not show the applied-for mark as actually used in commerce in connection with any of the goods specified in International Class 016.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); In re Keep A Breast Found., 123 USPQ2d 1869, 1876-79 (TTAB 2017); TMEP §§904, 904.07(a), 1301.04(d), (g)(i).  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.  15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a); see In re Gulf Coast Nutritionals, Inc., 106 USPQ2d 1243, 1247 (TTAB 2013). 

 

Specifically, the substitute specimen does not show the mark used in connection with the Class 016 goods.

 

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 and (b) shows the mark in actual use in commerce for the goods and/or services identified in the application.  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.”  The substitute specimen cannot be accepted without this statement.

 

(2)        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. 

 

Substitute Specimen Declaration

 

The following is a sample declaration for a verified substitute specimen for use in a paper response:

 

The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that the substitute specimen was in use in commerce at least as early as the filing date of the application; all statements made of his/her own knowledge are true and all statements made on information and belief are believed to be true.

 

 

_____________________________

(Signature)

 

_____________________________

(Print or Type Name and Position)

 

_____________________________

(Date)

 

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 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).

 

 

/Christina M Sobral/

Christina Sobral

Trademark Examining Attorney

Law Office 109

Christina.Sobral@uspto.gov

571.272.5703

 

 

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 September 21, 2021 for

U.S. Trademark Application Serial No. 90218647

 

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. 

 

 

/Christina M Sobral/

Christina Sobral

Trademark Examining Attorney

Law Office 109

Christina.Sobral@uspto.gov

571.272.5703

 

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 September 21, 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.”