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:  August 16, 2022

 

This Office action is supplemental to the previous Office action issued on April 1, 2022, in connection with this application.  On June 15, 2022, applicant filed its Response to Office Action.  Applicant’s Response raises a new issue that applicant must address; therefore, this nonfinal Office action is being issued to address the new issue.  See TMEP §715.03(b). 

 

The amendment to allege use has been reviewed by the assigned trademark examining attorney.  The amendment to allege use satisfies the minimum filing requirements under 37 C.F.R. §2.76(c) and it satisfies all statutory requirements.  See TMEP 1104.10.

 

In a previous Office action dated April 1, 2022, the trademark examining attorney refused registration of the applied-for mark based on the following: (1) Unsigned Application; (2) Foreign Registration Requirement; (3) Mark Description Requirement; and (4) Identification and Classification of Goods and Services Requirement. 

 

The trademark examining attorney notes that the following requirements are satisfied and/or obviated: (1) Unsigned Application; (2) Foreign Registration Requirement; (3) Mark Description Requirement; and (4) Identification and Classification of Goods and Services Requirement.   See TMEP §713.02. 

 

Applicant must respond to all issues raised in this Office action, within six (6) months of the date of issuance of this Office action.  37 C.F.R. §2.62(a); see TMEP §711.02.  If applicant does not respond within this time limit, the application will be abandoned.  37 C.F.R. §2.65(a).

 

The following is a SUMMARY OF ISSUES that applicant must address:

 

            •  NEW ISSUE:  Specimen Refusal in International Class 42

            •  Partial Abandonment Advisory

 

Specimen Refusal in International Class 42:

 

Specimen does not show direct association between mark and services.  Registration is refused because the specimen does not show a direct association between the mark and the services and fails to show the applied-for mark as actually used in commerce with the identified services in International Class 42.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a), (b)(2); TMEP §§904, 904.07(a), 1301.04(f)(ii), (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 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). 

 

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)). Furthermore, to show a direct association, specimens showing the mark used in rendering the identified services need not explicitly refer to those services, but “there must be something which creates in the mind of the purchaser an association between the mark and the service activity.”  In re The Cardio Grp., LLC, 2019 USPQ2d 227232, at *1 (TTAB 2019) (citing In re WAY Media, LLC, 118 USPQ2d 1697, 1698 (TTAB 2016)).

 

In the present case, the specimen does not show a direct association between the mark and services in that it illustrates the proposed mark used in connection with, what appears to be, online forums.  It is noted that applicant may not amend the application to include online forums. Applicant’s services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06. Accordingly, the specimen of record does not illustrate the proposed mark in use in commerce in connection with any of the following identified services: “Cloud computing featuring software for computer aided design, graphics design, multimedia production, project management, image manipulation and home design for use by architects, interior designers, civil engineers, construction managers, computer aided designers, multimedia manipulators, prototype creators, and graphics professionals; Computer aided graphic design; Computer project management services; Computer services, namely, creating an on-line community for registered users to publish and share their own content and images online; Providing a secure electronic online system featuring technology which allows users to create, publish, modify, share and produce personalized things from digital content, models and designs; Providing a web site featuring technology that enables users to design their own home layouts, three dimensional objects and construction projects; Providing a web site featuring temporary use of non-downloadable software for tools for image editing, simulation, visualization, rendering of digital objects and images, data management, construction projects, home design, object design and computer graphics; Providing an Internet website portal offering information in the field of computer-aided design; Cloud computing featuring software for aiding, operating, and controlling devices for printing of three-dimensional objects; Software as a service (SAAS) services featuring software for use in designing, creating, visualizing, editing, optimizing, and analyzing 3D meshes, 3D models, 3D point clouds, and orthographic projections and views; Providing temporary use of on-line non-downloadable software for use in designing, creating, visualizing, editing, optimizing, and analyzing 3D meshes, 3D models, 3D point clouds, and orthographic projections and views; Platform as a service (PAAS) featuring computer software platforms providing services, application programming interfaces, and software development kits to enable software developers and businesses, to develop software applications, products, and services; providing on-line non-downloadable computer software development tools; providing an internet website portal offering information on computer software development for others; software development consulting in the field of computer-aided design; technical support services in the field of software development, namely, troubleshooting of computer software problems; Software as a service (SAAS) services featuring software for use in manufacturing and 3D printing; Providing temporary use of on-line non-downloadable software for use in manufacturing and 3D printing; Software as a service (SAAS) services featuring software for use in electronic design automation and for designing and manufacturing printed circuit boards; Providing temporary use of on-line non-downloadable software for use in electronic design automation and for designing and manufacturing printed circuit boards; providing temporary use of online non-downloadable CAD/CAM software for machine control and general use; providing temporary use of online non-downloadable computer aided design (CAD) software for general use; providing temporary use of online non-downloadable computer aided manufacturing (CAM) software for machine control and general use” in International Class 42.

 

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 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 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.

 

Partial Abandonment Advisory:

 

Response guidelines.  For this application to proceed, applicant must explicitly address the 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.

 

If applicant does not timely respond to this Office action, the above identified services in International Class 42 will be deleted from the application.  See 37 C.F.R. §2.65(a); TMEP §718.02(a). 

 

In such case, the application will then proceed only with identified goods and services in International Classes 9 and 41 that applicant is not required to further clarify under the above noted requirement, as discussed above.  See TMEP §718.02(a). 

 

Assistance:

 

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

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

 

 

/David I. Dubin/

David I. Dubin

Examining Attorney

Law Office 107

571-270-0958

David.Dubin@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 August 16, 2022 for

U.S. Trademark Application Serial No. 90858708

 

A USPTO examining attorney has reviewed your trademark application and issued an Office action.  You must respond to this Office action in order to avoid your application abandoning.  Follow the steps below.

 

(1)  Read the Office action.  This email is NOT the Office action.

 

(2)  Respond to the Office action by the deadline using the Trademark Electronic Application System (TEAS).  Your response must be received by the USPTO on or before 11:59 p.m. Eastern Time of the last day of the response period.  Otherwise, your application will be abandoned.  See the Office action itself regarding how to respond.

 

(3)  Direct general questions about using USPTO electronic forms, the USPTO website, the application process, the status of your application, and whether there are outstanding deadlines to the Trademark Assistance Center (TAC).

 

After reading the Office action, address any question(s) regarding the specific content to the USPTO examining attorney identified in the Office action.

 

 

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 to ensure you receive important USPTO notices about your application.

 

·         Beware of trademark-related scams.  Protect yourself from people and companies that may try to take financial advantage of you.  Private companies may call you and pretend to be the USPTO or may send you communications that resemble official USPTO documents to trick you.  We will never request your credit card number or social security number over the phone.  And all official USPTO correspondence will only be emailed from the domain “@uspto.gov.”  Verify the correspondence originated from us by using your Serial Number in our database, TSDR, to confirm that it appears under the “Documents” tab, or contact the Trademark Assistance Center.

 

·         Hiring a U.S.-licensed attorney.  If you do not have an attorney and are not required to have one under the trademark rules, we encourage you to hire a U.S.-licensed attorney specializing in trademark law to help guide you through the registration process.  The USPTO examining attorney is not your attorney and cannot give you legal advice, but rather works for and represents the USPTO in trademark matters.