To: | Zhao Qin (lawyerchow01@gmail.com) |
Subject: | U.S. Trademark Application Serial No. 90435185 - RBONIGHT - N/A |
Sent: | April 16, 2021 03:13:21 PM |
Sent As: | ecom122@uspto.gov |
Attachments: | Attachment - 1 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90435185
Mark: RBONIGHT
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Correspondence Address:
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Applicant: Zhao Qin
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Reference/Docket No. N/A
Correspondence Email Address: |
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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: April 16, 2021
SUMMARY OF ISSUES
· Specimen Refusal and Corresponding Information Requirement
SEARCH OF USPTO DATABASE OF MARKS
SPECIMEN REFUSAL AND CORRESPONDING INFORMATION REQUIREMENT:
Digitally created or altered image or mockup is not an acceptable specimen. Registration is refused because the specimen appears to consist of a mockup of a depiction of the mark on a webpage in connection with the goods and does not show the applied-for mark as actually used in commerce in International Class 028. 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 electronic display or webpage that has been digitally created or altered to include the mark or a mockup of how the mark may be displayed on the electronic display or webpage 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, applicant appears to have merely digitally placed its mark in connection with a third party’s goods in its website images, as shown by the attached evidence displaying applicant’s exact toys being provided by a third party. See attachment from http://www.amazon.com/AOLIGE-Launcher-Dinosaur-Educational-Birthday/dp/B08M99JCSP/ref=pd_lpo_21_img_1/140-1387512-3108603?_encoding=UTF8&pd_rd_i=B08M99JCSP&pd_rd_r=7723bcc5-e69b-460b-bd29-6942c488ade4&pd_rd_w=Jaurg&pd_rd_wg=xAc23&pf_rd_p=337be819-13af-4fb9-8b3e-a5291c097ebb&pf_rd_r=3KF6ZV1PANNRGD8PCSPH&psc=1&refRID=3KF6ZV1PANNRGD8PCSPH.
Therefore the specimen fails to show actual, proper 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 obtained the content of the webpage or 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) For each web-based specimen submission, provide the full name of the online retailer or wholesaler whose webpage is shown in the specimen, the website URL, the access or print date, and a digital copy of the complete webpage showing the goods for sale on the named website.
(4) For each online retailer or wholesaler identified in response to question (3), specify the date 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 through that retailer/wholesaler, and whether the goods are still for sale to or within the United States through that retailer/wholesaler. If applicant is the online retailer or wholesaler, provide at least three invoices or other supporting documentation that show payments or other consideration made and state the dollar amount of sales with or within the United States, redacting personal or private information of buyers as necessary.
(5) If the goods identified in response to question (1) are sold in another type of sales environment, identify the environment (e.g. retail stores, catalogs, trade shows) and provide photographs and/or documentation showing the goods for sale with the mark in that environment, such as photographs of the sales displays or goods on shelves. If the information about how the goods appear in the actual sales environment is not available to applicant, describe how applicant’s goods are sold or transported to or within the United States 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.
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).
GENERAL RESPONSE GUIDELINES
How to respond. Click to file a response to this nonfinal Office action.
Sjogren, Jeffrey
/Jeffrey Sjogren/
Examining Attorney - Law Office 122
jeffrey.sjogren@uspto.gov
Phone: 571-272-5279
Fax: 571-273-5578
RESPONSE GUIDANCE