To: | Brice F Gilliam (info@elevationorthodontics.com) |
Subject: | U.S. Trademark Application Serial No. 90254596 - DEEP SOUTH MODERN - N/A |
Sent: | October 20, 2021 11:36:23 AM |
Sent As: | ecom107@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90254596
Mark: DEEP SOUTH MODERN
|
|
Correspondence Address:
|
|
Applicant: Brice F Gilliam
|
|
Reference/Docket No. N/A
Correspondence Email Address: |
|
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: October 20, 2021
This Office action is in response to Applicant’s communication filed on September 23, 2021.
In a previous Office action dated September 15, 2021, the trademark examining attorney refused registration of the applied-for mark based on the following: failure to show the applied-for mark in use in commerce with any of the specified services.
Based on Applicant’s response, the trademark examining attorney maintains and now makes FINAL the refusal 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:
FAILURE TO FUNCTION AS A SERVICE MARK
Specimen does not show use in specific classes. In the previous Office action, the trademark examining attorney refused registration because the specimen was not acceptable. Registration is again refused because the specimen does not show the applied-for mark as actually used in commerce in connection with any of the services specified in International Classes 35 and 42. 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 and/or services identified in the statement of 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); see In re Gulf Coast Nutritionals, Inc., 106 USPQ2d 1243, 1247 (TTAB 2013).
Specifically, Applicant’s substitute specimen consists of three pieces of “home goods” bearing the applied-for mark “(candles, mugs, planters, etc.) for retail sale” (Class 35) and a dentist office “blueprint[sic] designed for building plans” (Class 42). It fails to show the mark in reference to or connection with any of the services identified in the statement of use, namely retail store services in the field of home goods featuring a showroom for the goods of others in the field of home goods and residential building design (emphases added).
Examples of specimens. 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 option. Applicant may respond to this refusal by submitting, for each applicable international class, a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce prior to the expiration of the deadline for filing the statement of use and (b) shows the mark in actual use in commerce for the goods and/or services identified in the statement of 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 prior to expiration of the filing deadline for filing a statement of use.” The substitute specimen cannot be accepted without this statement.
Applicant may not withdraw the statement of use. See 37 C.F.R. §2.88(f); TMEP §1109.17.
For an overview of this response option and instructions on how to submit a different specimen using the online Trademark Electronic Application System (TEAS) form, see the Specimen webpage.
Based on the above discussion, the refusal to register the applied-for mark is therefore maintained and made FINAL.
RESPONSE TO FINAL REFUSAL/REQUIREMENT
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.
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).
/Dawn Han/
Examining Attorney
Law Office 107
(571) 272-0399
dawn.han@uspto.gov
RESPONSE GUIDANCE