| To: | BPARSEMENT, LLC (lhunt@belaw.com) |
| Subject: | U.S. Trademark Application Serial No. 90016138 - B - 15943-003 |
| Sent: | July 10, 2020 09:01:33 PM |
| Sent As: | ecom106@uspto.gov |
| Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 90016138
Mark: B
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Correspondence Address:
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Applicant: BPARSEMENT, LLC
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Reference/Docket No. 15943-003
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: July 10, 2020
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SUMMARY OF ISSUES:
SEARCH OF USPTO DATABASE OF MARKS
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.
SPECIMEN REFUSAL
With regard to Classes 16 and 28, the specimen images are not acceptable as a webpage specimen because they lacks the required URL. See 37 C.F.R. §2.56(c); Mandatory Electronic Filing & Specimen Requirements, Examination Guide 1-20, at V.B. (Rev. Feb. 2020). The specimen for Class 16 is missing the URL entirely and the specimen for Class 28 includes an incomplete URL that appears to have been cut off. The specimen thus appears to be in the nature of a digital mockup that fails to show the applied-for mark in actual use in commerce. See 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, 904.03(g), 904.07(a). 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 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).
A webpage submitted as a specimen must include the URL and access or print date to show actual use in commerce. 37 C.F.R. §2.56(c). Because the webpage specimen lacks the associated URL and/or access or print date on it, within the TEAS form used to submit the specimen, or in a verified statement in a later-filed response, it is unacceptable to show use of the mark in commerce.
As to International Class 18, the specimen is not acceptable as a webpage display associated with the goods and does 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. §2.56(a), (b)(1); see TMEP §§904, 904.03(g)-(i), 904.07(a). 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 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).
A webpage display specimen (1) must show use of the mark directly associated with the goods and (2) such use must be of a point-of-sale nature. 37 C.F.R. §2.56(b)(1). This means that this type of display specimen must include the following:
(1) A picture or sufficient textual description of the goods;
(2) The mark associated with the goods; and
(3) A means for ordering the goods such as a “shopping cart” button/link, an order form, or a telephone number for placing orders.
See In re Sones, 590 F.3d 1282, 1286-89, 93 USPQ2d 1118, 1122-24 (Fed. Cir. 2009); In re Azteca Sys., Inc., 102 USPQ2d 1955, 1957-58 (TTAB 2012); In re Dell Inc., 71 USPQ2d 1725, 1727 (TTAB 2004); Lands’ End v. Manbeck, 797 F. Supp. 511, 514, 24 USPQ2d 1314, 1316 (E.D. Va. 1992); TMEP §904.03(h), (i)-.03(i)(D).
In this case, the specimen does not show sufficient means for ordering the goods. Specifically, the goods appear to be sold out, so there is no means for the consumer to add the goods to their cart or otherwise purchase or order the goods shown on the specimen.
Accordingly, such material is mere advertising, which is not acceptable as a specimen for goods. See In re Siny Corp., 920 F.3d 1331, 1336, 2019 USPQ2d 127099, at *2-3 (Fed. Cir. 2019) (citing Powermatics, Inc. v. Globe Roofing Prods. Co., 341 F.2d 127, 130, 144 USPQ 430, 432 (C.C.P.A. 1965)); see also Avakoff v. S. Pac. Co., 765 F.2d 1097, 1098, 226 USPQ 435, 436 (Fed. Cir. 1985); TMEP §904.04(b), (c).
Examples of 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, whether for goods or services, must include the webpage’s URL and the date it was accessed or printed. 37 C.F.R. §2.56(c).
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.
MARK DESCRIPTION INCOMPLETE
The following description is suggested, if accurate: The mark consists of a stylized letter ‘B” with a three point crown on top, all surrounded by an outline that is dripping as if comprised of liquid.
IDENTIFICATION AND CLASSIFICATION OF GOODS
Please see the suggested amendments below. Applicant should note that any wording in bold, in italics, and/or in ALL CAPS below offers guidance or shows the changes being proposed for the identification of goods and/or services. If there is
wording in the applicant’s identification of goods and/or services which should be removed, it will be shown with a line through it such as this: strikethrough. When making amendments, applicant should enter them in standard font, not in bold, in italics, and/or in ALL CAPS. If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.
Applicant may adopt the following identification and classification of goods and/or services, if accurate:
International Class 9: stickers and decals
International Class 18: bookbags, backpacks, handbags, purses, clutches, all-purpose __________ {specify type, e.g., carrying} bags, and drawstring bags
International Class 20: pillows, decorative pillows, bed pillows
International Class 22: all-purpose MESH STORAGE bags
International Class 25: Clothing, namely, baseball caps and hats, pajama pants, jackets, beanies, sweatshirts, baseball shirts, hooded sweatshirts, t-shirts, tops as clothing, bottoms as clothing, headbands
International Class 28: stuffed and plush toys
International Class 35: Online retail store services featuring clothing, clothing accessories, decals, bags, plush toys, and pillows; endorsement services, namely, promoting the goods and services of others
International Class 41: Entertainment services, namely, providing non-downloadable prerecorded videos featuring information and commentary about video games, skits, and general interest activities, all on-line via a global computer network; Entertainment services, namely, personal appearances by a gaming and internet celebrity
See TMEP §1402.01.
Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Generally, any deleted goods and/or services may not later be reinserted. See TMEP §1402.07(e).
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.
MULTIPLE-CLASS APPLICATION REQUIREMENTS
The application references goods and services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class:
FOR THE CLASS(ES) BASED ON USE IN COMMERCE, INTENT TO USE AND/OR FOREIGN REGISTRATION:
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).
(2) Submit a filing fee for each international class not covered by the fees already paid (view the USPTO’s current fee schedule). Specifically, the application identifies goods and services that are classified in at least 8 classes; however, applicant submitted a fees sufficient for only 7 classes. Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.
FOR THE CLASS(ES) BASED ON USE IN COMMERCE:
(3) Submit verified dates of first use of the mark anywhere and in commerce for each international class. See more information about verified dates of use.
(4) Submit a specimen for each international class. Applicant needs a specimen for all classes for which a Section 1(a) filing basis is asserted. See more information about specimens.
Examples of specimens for goods include tags, labels, instruction manuals, containers, and photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale. Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods.
Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and website printouts that show the mark used in the actual sale, rendering, or advertising of the services.
(5) Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.” See more information about verification.
See 15 U.S.C. §§1051(a), 1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(1)-(3), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).
See an overview of the requirements for a multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
For this application to proceed, applicant must explicitly address each refusal and/or 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.
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.
/J. Evan Mucha/
J. Evan Mucha
Examining Attorney
Law Office 106
571-270-1989
evan.mucha@uspto.gov
RESPONSE GUIDANCE