To: | Yuga Labs LLC (trademarks@fenwick.com) |
Subject: | U.S. Trademark Application Serial No. 90739994 - BA YC - 39048-00070 |
Sent: | March 21, 2022 08:12:31 PM |
Sent As: | ecom111@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90739994
Mark: BA YC
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Correspondence Address:
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Applicant: Yuga Labs LLC
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Reference/Docket No. 39048-00070
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: March 21, 2022
SEARCH OF USPTO DATABASE OF MARKS
PREMATURE USE (Class 45 Only)
The use or display of a mark in the sale or advertising of goods and/or services before the goods are actually created or provided or the services 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).
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).
Applicant should note the following additional ground for refusal.
Class 16
Specifically, applicant’s Class 16 identification includes “digital collectibles” and “digital collectibles sold as non-fungible tokens”. However, applicant’s specimen does not indicate that applicant is providing these goods. For example, page 2 of the specimen states “BAYC is a collection of 10,000 Bored Ape NFTs – unique digital collectibles living on the Ethereum blockchain”. However, this is merely informational matter. Further, page 3 the specimen provides a link to an external third party for the purpose of purchasing a piece of applicant’s collection. Specifically, the page states “BUY AN APE ON OPENSEA”, suggesting that OpenSea is the provider of applicant’s goods. Lastly, the individual pieces of the collection are referred to as APE and/or BORED APE. As a result, the specimen of record is merely informational matter and does not show the applied-for mark as actually used in commerce in International Class 16.
Classes 35 and 45
When determining whether a mark is used in connection with the services in the application, a key consideration is the perception of the user. In re JobDiva, Inc., 843 F.3d 936, 942, 121 USPQ2d 1122, 1126 (Fed. Cir. 2016) (citing Lens.com, Inc. v. 1-800 Contacts, Inc., 686 F.3d 1376, 1381-82, 103 USPQ2d 1672, 1676 (Fed Cir. 2012)). A specimen must show the mark used in a way that would create in the minds of potential consumers a sufficient nexus or direct association between the mark and the services being offered. See 37 C.F.R. §2.56(b)(2); In re Universal Oil Prods. Co., 476 F.2d 653, 655, 177 USPQ2d 456, 457 (C.C.P.A. 1973); TMEP §1301.04(f)(ii).
To show a direct association, specimens consisting of advertising or promotional materials must (1) explicitly reference the services and (2) show the mark used to identify the services and their source. In re The Cardio Grp., LLC, 2019 USPQ2d 227232, at *2 (TTAB 2019) (quoting In re WAY Media, LLC, 118 USPQ2d 1697, 1698 (TTAB 2016)); TMEP §1301.04(f)(ii). Although the exact nature of the services does not need to be specified in the specimen, there must be something that creates in the mind of the purchaser an association between the mark and the services. In re Adair, 45 USPQ2d 1211, 1215 (TTAB 1997) (quoting In re Johnson Controls Inc., 33 USPQ2d 1318, 1320 (TTAB 1994)).
In the present case, applicant’s Class 35 services include “maintain and record ownership of digital illustrations; maintain and record ownership of digital illustrations represented by non-fungible tokens; providing a website featuring an online marketplace for exchanging digital collectibles”. Page 9 of the specimen features a provenance record of each of applicant’s non-fungible tokens, however this record of ownership appears to be incidental to applicant’s business. Thus, applicant does not appear to be providing this service for others. Further, applicant’s specimen does not indicate that applicant sells digital collectibles. As previously discussed, page 3 of the specimen provides a link to an external third party for the purpose of purchasing a piece of applicant’s collection. Accordingly, the specimen does not indicate that applicant is providing an online marketplace for exchanging digital collectibles. As a result, the specimen does not show a direct association between the mark and services in Class 35.
With respect to Class 45, applicant has applied to register “online social networking services provided through a members-only website; computer services, namely, creating an online community for registered users to access a collaborative graffiti board” in Class 45. Page 2 of the specimen states: “Your Bored Ape doubles as your Yacht Club membership card, and grants access to members-only benefits, the first of which is access to THE BATHROOM, a collaborative graffiti board.” No additional information is provided that indicates applicant is providing online-social networking services. Page 5 of the specimen provides information regarding applicant’s graffiti board however, the “collaborative graffiti board” is referred to as THE BATHROOM. Accordingly, THE BATHROOM is perceived as the source for these services, not BORED APE YACHT CLUB. Lastly, this page merely provides information about how the graffiti board will operate and who will have access to it. As a result, the specimen fails to show the applied for mark being used in connection with applicant’s Class 45 services.
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 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.
AMENDED IDENTIFICATION OF GOODS AND SERVICES REQUIRED (Classes 16 and 35 Only)
Applicant may adopt the following identification, if accurate:
Class 9
Class 16
digital collectibles; digital collectibles sold as non-fungible tokens
Class 35
Maintaining and recording ownership of art prints comprised of digital illustrations originating from photographs; maintaining and recording ownership of downloadable image files featuring digital illustrations authenticated by nonfungible tokens; Provision of an online marketplace for buyers and sellers of downloadable digital collectibles in the nature of {indicate type of downloadable digital goods, e.g., art images, music, video clips, etc.} authenticated by non-fungible tokens (NFTs)
Class 45
{Acceptable as written}
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
AMENDED DESCRIPTION OF MARK REQUIRED
The following description is suggested, if accurate:
The mark consists of an ape skull facing left, with the stylized letters “BA” appearing to the left of the skull and the letters “YC” appearing to the right of the skull. The black rectangle represents background only and is not claimed as a feature of the mark.
ASSISTANCE
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.
/Megan Clifford/
Megan Clifford
Examining Attorney
Law Office 111
(571) 272-9322
megan.clifford@uspto.gov
RESPONSE GUIDANCE