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:  April 21, 2021

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) 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:

• Specimen Refusal – Failure to Function

 

SPECIMEN REFUSAL – FAILURE TO FUNCTION

 

Registration is refused because the applied-for mark, as used on the specimen of record, does not function as a service mark to identify and distinguish applicant’s services from those of others and to indicate the source of applicant’s services.  Trademark Act Sections 1, 2, 3, and 45, 15 U.S.C. §§1051-1053, 1127; see In re Keep A Breast Found., 123 USPQ2d 1869, 1879-80 (TTAB 2017); In re Moody’s Investors Serv., Inc., 13 USPQ2d 2043, 2048-49 (TTAB 1989); TMEP §§904.07(b), 1301.02 et seq.

 

The applied-for mark, as shown on the specimen, does not function as a service mark because it appears to be used to show emphasis or excitement, rather than as a source identifier for the services. Specifically, applicant’s submitted specimen consists of two images, both of which show the applied-for mark present on a sign, next to the wording DESDE and a price. The attached evidence shows that the wording DESDE means “From”, and the specimen appears to show the applied-for mark is providing an emphasis that the clothing present on that particular display is a low price, namely, “From $6.99!” and “From $9.99!”, rather than acting as a source identifier for the retail store services. As such, the specimen of record does not function as a service mark, and accordingly, registration is refused.

 

Whether a designation functions as a mark depends on the commercial impression it makes on the relevant public; that is, whether purchasers would be likely to regard it as a source-indicator for the services.  See In re Keep A Breast Found., 123 USPQ2d 1869, 1879 (TTAB 2017) (quoting In re Eagle Crest Inc., 96 USPQ2d 1227, 1229 (TTAB 2010)); TMEP §1301.02.  The specimen and any other relevant evidence of use is reviewed to determine whether an applied-for mark is being used as a service mark.  See In re Keep A Breast Found., 123 USPQ2d at 1879 (quoting In re Eagle Crest Inc., 96 USPQ2d at 1229); TMEP §1301.02. 

 

Not every designation used in the advertising or performance of services functions as a service mark, even though it may have been adopted with the intent to do so.  In re Keep A Breast Found., 123 USPQ2d at 1879 (quoting Am. Velcro, Inc. v. Charles Mayer Studios, Inc., 177 USPQ 149, 154 (TTAB 1973)); see TMEP §1301.02.  A designation can only be registered when purchasers would be likely to regard it as a source-indicator for the services.  TMEP §1301.02; see In re Moody’s Investors Serv. Inc., 13 USPQ2d 2043, 2047-49 (TTAB 1989).

 

Response options.  Applicant may respond to this refusal by satisfying one of the following for each applicable 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 proper service mark use for the services 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.

 

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 §1301.04(a).

 

(2)        Amend the filing basis to intent to use under Section 1(b) for which no specimen is required before publication. See TMEP §806.03(c).  This includes withdrawing an amendment to allege use, if one was filed.  This option will later necessitate additional fee(s) and filing requirements, including a specimen.

 

To amend the basis from Section 1(a) to Section 1(b), applicant must submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “Applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date.”  37 C.F.R. §2.34(a)(2); TMEP §806.01(b); see 15 U.S.C. §1051(b); 37 C.F.R. §2.35(b)(1). 

 

To withdraw an amendment to allege use, applicant must make a statement in the record requesting that the amendment to allege use be withdrawn. 

 

For more information about the response options above and instructions on how to submit a different specimen using the online Trademark Electronic Application System (TEAS) form, see the Specimen webpage.

 

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.

 

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.    

 

 

/Josh Galante/

Joshua M. Galante

Trademark Examining Attorney

Law Office 127

571-272-4310

Josh.Galante@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 April 21, 2021 for

U.S. Trademark Application Serial No. 90437561

 

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. 

 

 

/Josh Galante/

Joshua M. Galante

Trademark Examining Attorney

Law Office 127

571-272-4310

Josh.Galante@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 April 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.”