Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

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 27, 2021

 

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on September 21, 2021.

 

In a previous Office action dated July 28, 2021, the trademark examining attorney refused registration of the applied-for mark based on the following:  Trademark Act Sections 1, 2, 3, and 45 because the specimen shows that applicant has not used the applied-for mark in commerce in connection with the identified services as of the application filing date.  In addition, applicant was required to satisfy the following requirements:  amend the identification of services.

 

Based on applicant’s response, the trademark examining attorney notes that the following requirement has been satisfied: a definite amended identification was provided.  See TMEP §§713.02, 714.04. 

 

Upon further, 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.

 

ISSUE MADE FINAL that applicant must address:

 

• Trademark Act Sections 1, 2, 3, and 45 Refusal – Premature Use

 

TRADEMARK ACT SECTIONS 1, 2, 3, AND 45 REFUSAL – PREMATURE USE

 

Registration is refused because the substitute specimen shows that applicant has not used the applied-for mark in commerce in connection with the identified services as of the application filing date.  Trademark Act Sections 1(a) and 45, 15 U.S.C. §§1051(a), 1127; 37 C.F.R. §2.34(a)(1)(i); see TMEP §§904, 1301.03(a). 

 

The use or display of a mark in the sale or advertising of services before the services are actually rendered does not show use in commerce.  See Couture v. Playdom, Inc., 778 F.3d 1379, 1380-82, 113 USPQ2d 2042, 2043-44 (Fed. Cir. 2015); In re Cedar Point, Inc., 220 USPQ 533 (TTAB 1983); TMEP §§904, 1301.03(a).

 

In this case, the applicant’s original specimen showed that applicant had not used the applied-for mark in commerce in connection with the identified services as of the application filing date since they are described in the specimen as “COMING THIS 2021” without any indication as to actual use prior to filing the application.  The applicant’s substitute specimen again presents the services as a future activity that is currently in development “At MattBatFilms, we’re building the next big thing & it’s called Staxer we have this mission to build a video streaming platform made for the creator.”  As such, the substitute specimen of record still does not show that the applicant’s mark was in actual use as of the application filing date or even that the mark is currently in use since all of the references to its services reflect that the service is currently being developed.  Furthermore, even by clicking the links shown in the specimen, the applicant’s webpage still loads a website building service and thus further indicates that the applicant’s streaming services are not currently active. See attached evidence from applicant’s page and the related login service for a web development platform, Plesk.

 

If applicant’s goods were being sold or transported or the services were being rendered in commerce as of the application filing date, applicant must submit the following: 

 

(1)        A different specimen (a verified “substitute” specimen) showing the applied-for mark in use in commerce for the goods and/or services specified in the application.  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)        The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “The substitute specimen was in use in commerce at least as early as the application filing date.”  37 C.F.R. §2.59(a); TMEP §904.05; see 37 C.F.R. §2.193(e)(1).  If submitting a substitute specimen requires an amendment to the dates of use, applicant must also verify the amended dates.  37 C.F.R. §2.71(c); TMEP §904.05.

 

If applicant did not use the applied-for mark in commerce on or before the filing date, applicant may substitute a different basis for filing if applicant can meet the requirements for the new basis.  In this case, applicant may wish to amend the application to assert a Section 1(b) basis.  See TMEP §806.03(c).  However, if applicant amends the basis to Section 1(b), registration will not be granted until applicant later amends the application back to use in commerce by filing an acceptable allegation of use with a proper specimen.  See 15 U.S.C. §1051(c), (d); 37 C.F.R. §§2.76, 2.88; TMEP §1103.  If the same specimen is submitted with an allegation of use, the same refusal will issue.

 

To amend 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), 2.193(e)(1).

 

 

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).

 

 

/Amer Raja/

Amer Raja

Examining Attorney

Law Office 121

(571) 270 5936

amer.raja@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 October 27, 2021 for

U.S. Trademark Application Serial No. 90460572

 

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. 

 

 

/Amer Raja/

Amer Raja

Examining Attorney

Law Office 121

(571) 270 5936

amer.raja@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 October 27, 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.”