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:  July 29, 2021

 

 

Trademark Lawyer:  Because of the legal issues and strict deadlines of the trademark application process, the applicant is encouraged to hire a private attorney who specializes in trademark matters to assist in this process.  The assigned trademark examining attorney can provide only limited assistance explaining the content of an Office action and the application process.  USPTO staff cannot provide legal advice or statements about an applicant’s legal rights.  TMEP §§705.02, 709.06.  See Hiring a U.S.-licensed trademark attorney for more information. 

 

Database Search:  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.

 

Application Has Been Reviewed: The referenced application has been reviewed by the assigned trademark examining attorney.  To avoid abandonment, the 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.

 

Summary of Issues Applicant Must Address

• Unclear Filing Basis
• Unacceptable Specimens of Use – Do Not Show the Mark
• Disclaimer
• Deletion of Translation Statement

 

Unclear Filing Basis

The filing basis of the application is unclear.  The application claims a use basis under Trademark Act Section 1(a) as to “Nickel alloy ingots; Nickel alloys; Nickel and its alloys; Stainless steel; Stainless steels; Common metals and their alloys including stainless steel; Tubes of nickel alloys; Tubes of stainless steel” and an intent-to-use basis under Trademark Act Section 1(b) as to no stated goods. 

 

The applicant must (1) amend the application to specify clearly at least one filing basis, and (2) satisfy all the requirements for the basis or bases asserted.  37 C.F.R. §§2.32(a)(5), 2.34(a); TMEP §806.

 

An applicant may add one or more of the following four bases to an application after filing:

 

(1)       Use of the mark in commerce under Trademark Act Section 1(a);

 

(2)       A bona fide intention to use the mark in commerce under Section 1(b);

 

(3)       A foreign registration of the same mark for the same goods and/or services in an applicant’s country of origin, under Section 44(e); and/or

 

(4)       A claim of priority based on an earlier-filed foreign application of the same mark for the same goods and/or services, which is filed within six months after the filing date of the foreign application, under Section 44(d).

 

Although an applicant may assert more than one basis, an applicant may not assert both Section 1(a) for use and Section 1(b) for intent to use for identical goods and services.  37 C.F.R. §2.34(b); TMEP §806.02(b).

 

For more information about the different legal requirements for each basis, for submitting more than one basis, and for instructions on how to satisfy these requirements online using the Trademark Electronic Application System (TEAS) form, please go to the Basis webpage.

 

Unacceptable Specimens of Use – Do Not Show the Mark

The mark “ALLOY V22” does not appear on the specimens of use submitted with the application.  Registration is refused because the applied-for mark does not appear anywhere on the specimens for Class 6, and therefore these specimens do not show the applied-for mark as actually used in commerce.  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(f)(i), (g)(i).  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 and/or services 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). 

 

Examples of acceptable 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). 

 

Any webpage printout or screenshot submitted as a specimen must include the webpage 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.  The applicant may respond to this refusal by satisfying one of the following 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 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.

 

(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.

 

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.

 

Disclaimer

The applicant must disclaim the exclusive rights to use “ALLOY” because this word is merely descriptive of a feature of the applicant’s goods.  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). 

 

A disclaimer is a statement in the application record that an applicant does not claim exclusive rights to an unregistrable component of the mark.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965); TMEP §1213.  A disclaimer does not physically remove the disclaimed matter from the mark or otherwise affect the appearance of the mark.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d at 979, 144 USPQ2d at 433; TMEP §1213.

 

The attached dictionary entry shows that “alloy” means “a metallic solid or liquid that is composed of a homogeneous mixture of two or more metals or of metals and nonmetal or metalloid elements, usually for the purpose of imparting or increasing specific characteristics or properties.”  This evidence is linked to the goods at issue in that the evidence shows that “alloy” is descriptive of a feature of the goods.  The description of the goods given by the applicant indicates that the goods include alloys.

 

Purchasers who encounter the word “alloy” with the identified goods would immediately understand that the applicant’s goods include alloys; therefore, the exclusive rights to use of the term “alloy” must be disclaimed. 

 

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

 

• No claim is made to the exclusive right to use “ALLOY” 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.

 

Deletion of Translation Statement

The application includes a statement that “the English translation of V in the mark is Valex.”  However,  this statement should be deleted from the application because the term “V” does not translate from a foreign language to the term “Valex.”  See TMEP §809.01 et seq. 

 

 

 

How to respond.  Click to file a response to this nonfinal Office action.    

 

 

/Leigh Caroline Case/

Examining Attorney

Law Office 112

(571) 272-9140

leigh.case@uspto.gov

(800) 786-9199 (Trademark Assistance Center)

 

 

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 July 29, 2021 for

U.S. Trademark Application Serial No. 90460676

 

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. 

 

 

/Leigh Caroline Case/

Examining Attorney

Law Office 112

(571) 272-9140

leigh.case@uspto.gov

(800) 786-9199 (Trademark Assistance Center)

 

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 July 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.”