To: | APSA, Inc (andrew@morabitolawoffice.com) |
Subject: | U.S. Trademark Application Serial No. 90454299 - OFFICER AMERICAN PARATUS SECURITY - STRO20.TM.02 |
Sent: | November 12, 2021 10:44:46 AM |
Sent As: | ecom110@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90454299
Mark: OFFICER AMERICAN PARATUS SECURITY
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Correspondence Address:
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Applicant: APSA, Inc
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Reference/Docket No. STRO20.TM.02
Correspondence Email Address: |
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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: November 12, 2021
This Office action is in response to applicant’s communication filed on October 22, 2021.
In a previous Office action dated July 23, 2021, the trademark examining attorney refused registration of the applied-for mark based on the following: the submitted specimen is illegible. In addition, applicant was required to satisfy the following requirements: disclaim descriptive wording and geographically descriptive designs in the mark, submit an acceptable mark drawing, and provide a complete mark description.
Based on applicant’s response, the trademark examining attorney notes that the following requirements have been satisfied: disclaimer requirement, in part: applicant disclaimed descriptive wording but not the geographically descriptive designs in the mark; drawing requirement: applicant submitted an acceptable mark drawing; and mark description requirement: applicant provided a complete mark description. See TMEP §§713.02, 714.04.
Accordingly, the trademark examining attorney maintains and now makes FINAL the refusal and requirement 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:
A. SPECIMEN REFUSAL – SPECIMEN ILLEGIBLE
In this case, the mark or a variation of the mark appears to be displayed on the second page of the substitute specimen submitted with applicant’s response. However, due to the low quality of the submitted image, the wording in the mark is illegible. Because the substitute specimen does not include a legible image of the applied-for mark, the specimen does not show use of applicant’s mark in commerce, as required.
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 options. Applicant may respond to this refusal by satisfying one of the following for each applicable international class:
(1) Submit a true copy of the originally submitted specimen that is clear and legible, with a statement by the person who transmitted it that it is a true copy of the specimen that was originally submitted.
(2) 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 and/or services 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.
(3) 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.
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.
B. DISCLAIMER OF GEOGRAPHICALLY DESCRIPTIVE DESIGNS REQUIRED
In applicant’s response, applicant disclaimed descriptive wording in the mark. Applicant must also disclaim the geographically descriptive designs in the mark.
An accurate design of geographically descriptive matter and the word or words which describe the design are legal equivalents; therefore, a design must be disclaimed the same as the primarily geographically descriptive wording See In re Can. Dry Ginger Ale, Inc., 86 F.2d 830, 832, 32 USPQ 49, 50 (C.C.P.A. 1936); TMEP §1210.02(a).
The design of the United States is the legal equivalent of the geographic place or location named the United States. TMEP §1210.02(a). The attached evidence from the Columbia Gazetteer shows that the United States is a generally known geographic place or location. See TMEP §§1210.02 et seq. The services for which applicant seeks registration originate in this geographic place or location as shown by applicant’s address in Texas, which is located within the United States. In addition, applicant’s specimen shows that applicant has offices in Florida and Texas, and provides services in Florida, Mississippi, Texas, and Wisconsin, which are all located within the United States. See TMEP §1210.03. Because the services originate in this place or location, a public association of the services with the place is presumed. See In re Hollywood Lawyers Online, 110 USPQ2d 1852, 1858 (TTAB 2014) (citing In re Spirits of New Merced, LLC, 85 USPQ2d 1614, 1621 (TTAB 2007)); TMEP §§1210.02(a) 1210.04.
Applicant may respond to this issue by providing a disclaimer in the following format:
No claim is made to the exclusive right to use “OFFICER”, “AMERICAN”, “SECURITY AGENCY”, “SERVICE”, and the designs of the United States apart from the mark as shown.
For an overview of disclaimers and instructions on how to provide one using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
RESPONDING TO THIS FINAL OFFICE ACTION
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).
/Todd J. Lewellen/
Todd J. Lewellen
Examining Attorney
Law Office 110
571-272-3199
todd.lewellen@uspto.gov
RESPONSE GUIDANCE