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:  June 29, 2021

 

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

 

• Mark on Drawing Differs from Mark on Specimen – Refusal (Classes 10, 25, and 44)
• Disclaimer – Requirement (Class 44 Only)
• Mark Description – Clarification Requirement

 

MARK ON DRAWING DIFFERS FROM MARK ON SPECIMEN – REFUSAL (CLASSES 10, 25, AND 44)

 

THIS PARTIAL REFUSAL APPLIES TO CLASSES 10, 25, AND 44 ONLY

 

Mark shown on drawing does not match mark on specimen.  Registration is refused because the specimen does not show the mark in the drawing in use in commerce in International Classes 10, 25, and 44, which is required in the application or amendment to allege use.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a), 1301.04(g)(i).  The mark appearing on the specimen and in the drawing must match; that is, the mark in the drawing “must be a substantially exact representation of the mark” on the specimen.  See 37 C.F.R. §2.51(a)-(b); TMEP §807.12(a).

 

In this case, the specimen for the sanitary masks displays the mark as SAMEDAYTESTING.CO underneath a lotus flower design, the specimen for the sweatshirt displays the mark as SAMEDAYTESTING underneath a lotus flower design, and the specimen for applicant’s testing services displays the marks as SAMEDAYTESTING to the right of a lotus flower design.  However, the drawing displays the mark as the wording SAMEDAY centered under a lotus flower design.  The mark on the specimen does not match the mark in the drawing because they include additional wording TESTING or TESTING.CO and the orientation of the lotus flower in relation to the wording does not appear in the same manner.  Applicant has thus failed to provide the required evidence of use of the mark in commerce.  See TMEP §807.12(a).

 

Response options.  Applicant may respond to this refusal by satisfying one of the following:

 

(1)        Submit a different specimen (a verified “substitute” specimen) for each applicable international class that (a) shows the mark in the drawing in actual use in commerce for the goods and/or services in the application or amendment to allege use, and (b) 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.

 

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)(1), (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).

 

(2)        Submit a request to 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 such as providing a specimen.

 

The USPTO will not accept an amended drawing submitted in response to this refusal because the changes would materially alter the drawing of the mark in the original application or as previously acceptably amended.  See 37 C.F.R. §2.72(a)-(b); TMEP §807.14.  Specifically, amending the mark on the drawing to agree with the mark on the specimen would be a material alteration because it would involve adding completely different wording TESTING and/or TESTING.CO, which would alter the appearance and sound of the marks.

 

For more information about drawings and instructions on how to satisfy these response options using the online Trademark Electronic Application System (TEAS) form, see the Drawing webpage.

 

DISCLAIMER – REQUIREMENT (CLASS 44)

 

THIS PARTIAL REQUIREMENT APPLIES TO CLASS 44 ONLY

 

Applicant must disclaim the wording “SAME DAY” because it is commonly used in applicant’s particular trade or industry to impart information about the goods and/or services and would not be perceived as distinguishing the goods and/or services and identifying their source; thus the wording does not function as a mark.  See 15 U.S.C. §§1051-1053, 1127; In re Boston Beer Co., 198 F.3d 1370, 1372-74, 53 USPQ2d 1056, 1058-59 (Fed. Cir. 1999); In re Aerospace Optics, Inc., 78 USPQ2d 1861, 1864 (TTAB 2006); TMEP §§807.14(a), 1202.04, 1213.03(a), (b).

 

Determining whether a term functions as a trademark or service mark depends on how such matter would be perceived by the relevant public.  In re Eagle Crest, Inc., 96 USPQ2d 1227, 1229 (TTAB 2010); In re Aerospace Optics, Inc., 78 USPQ2d at 1862; TMEP §1202.04.  “The more commonly a [term] 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.

 

The attached Internet evidence from various testing providers shows that this term is commonly used by those in the medical testing field as a promotional phrase that touts the speed and efficiency of their services.  Because consumers are accustomed to seeing this term commonly used by many businesses and those in the healthcare and medical testing field to impart information to consumers, they will perceive this term or slogan only as informational matter rather than as a service mark that distinguishes applicant’s services from those of others and identifies the source of applicant’s services.

 

In the alternative, this wording must be disclaimed because it is merely descriptive of a characteristic or feature of applicant’s testing services.  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).  The attached dictionary evidence from the Cambridge Dictionary shows that “SAME-DAY” is “used for describing services that can be provided or completed on the same day that they are asked for,” with “SAME” separately defined as “not another different place, time, situation, person, or thing,” and “DAY” defined as “a period of 24 hours, especially from twelve o’clock one night to twelve o’clock the next night.”  Taken together, SAMEDAY in applicant’s mark would be perceived by consumers as describing a feature and characteristic of applicant’s testing services, which are provided or completed on the same day that they are asked for.  Furthermore, the attached Internet evidence shows that SAME DAY or SAME-DAY is commonly used by similar providers to describe its medical testing, monitoring, and/or reporting services.  Therefore, this wording is descriptive of applicant’s services and must be disclaimed.

 

Please note that the wording “SAMEDAY,” which is not a recognized spelling (see negative dictionary evidence attached) must appear in its correct grammatical form, i.e., “SAME DAY” in the disclaimer.  See In re Omaha Nat’l Corp., 819 F.2d 1117, 1119, 2 USPQ2d 1859, 1861 (Fed. Cir. 1987); In re Carlson, 91 USPQ2d 1198, 1203 (TTAB 2009); TMEP §1213.08(c).

 

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

 

No claim is made to the exclusive right to use “SAME DAY” for International Class 44 apart from the mark as shown.

 

TMEP §§1213.03(c), 1213.08(a)(i); see In re Owatonna Tool Co., 231 USPQ 493, 494 (Comm’r Pats. 1983).

 

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

 

MARK DESCRIPTION – CLARIFICATION REQUIREMENT

 

Applicant must submit an amended description of the mark that agrees with the mark on the drawing.  37 C.F.R. §2.37; see TMEP §§808.01, 808.02.  The current description is inconsistent with the mark on the drawing in that it appears to inaccurately refer to the shapes comprising the lotus flower as ovals.  37 C.F.R. §2.37; see TMEP §§808.01, 808.02.  Descriptions must be accurate and identify only those literal and design elements appearing in the mark.  See 37 C.F.R. §2.37; TMEP §§808.02, 808.03(d).  Additionally, the mark drawing appears to have a slight off-white colored background, which must be clarified to indicate whether it is part of the mark.

 

The following description is suggested, if accurate:  The mark consists of a stylized lotus flower appearing above the stylized wording “SAMEDAY”.  The background is for shading purposes only and is not claimed as a feature of the mark.

 

RESPONSE GUIDELINES

 

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.    

 

 

Young Wolfe

/Young Wolfe/

Trademark Examining Attorney

Law Office 122

571-272-5579

young.wolfe@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 June 29, 2021 for

U.S. Trademark Application Serial No. 90408496

 

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. 

 

 

Young Wolfe

/Young Wolfe/

Trademark Examining Attorney

Law Office 122

571-272-5579

young.wolfe@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 June 29, 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.”