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:  April 12, 2022

 

The referenced application has been reviewed by the assigned trademark examining attorney.  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.

 

 

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.

 

 

SUMMARY OF ISSUES:

• Refusal – Failure to Show Use in Commerce – Mark Differs on Drawing and Specimen
• Refusal – Failure to Function as a Trademark – Merely Ornamental – Classes 018 and 024
• Refusal – Failure to Show Use in Commerce – Digitally Altered Specimen – Class 024
• Requirement – Information About Specimen – Class 024
• Requirement – Amendment of Identification of Goods
• Advisory – Classification of Goods and
• Advisory – Multiple-Class Application Requirements

 

 

MARK ON DRAWING DIFFERS FROM MARK ON SPECIMEN

 

Mark shown on drawing does not match mark on specimen.  Registration is refused because the specimen does not show the mark in the drawing in use in commerce in International Classes 009, 016, 018, and 024, which is required in the application or amendment to allege use.  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(g)(i).  The mark appearing on the specimen and in the drawing must match; that is, the mark in the drawing “must be a substantially exact representation of the mark” on the specimen.  See 37 C.F.R. §2.51(a)-(b); TMEP §807.12(a). 

 

In this case, the specimen displays the mark as a green parrot in several different positions, with wings closed, in a dancing form, running, from a side view, sitting, and in a talking position.

 

However, the drawing displays the mark as a green parrot with two outspread wings and standing in an upright position. 

 

The mark on the specimen does not match the mark in the drawing because the specimen does not show the parrot in the upright standing position with two outspread wings as appears in the drawing.  Applicant has thus failed to provide the required evidence of use of the mark in commerce.  See TMEP §807.12(a).

 

Response options.  Applicant may respond to this refusal by satisfying one of the following:

 

(1)        Submit a new drawing of the mark that shows the mark on the specimen and, if appropriate, an amendment of the description and/or color claim that agrees with the new drawing.  See 37 C.F.R. §2.72(a)-(b).  Applicant may amend the mark in the drawing to match the mark on the specimen but may not make any other changes or amendments that would materially alter the drawing of the mark.  See 37 C.F.R. §2.72(a)-(b); TMEP §807.14.

 

(2)        Submit a different specimen (a verified “substitute” specimen) for each applicable international class that (a) shows the mark in the drawing in actual use in commerce for the goods and/or services in the application or amendment to allege use, and (b) 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.

 

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). 

 

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)(1), (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).

 

For more information about drawings and instructions on how to satisfy these response options using the online Trademark Electronic Application System (TEAS) form, see the Drawing webpage.

 

 

SECTIONS 1, 2 AND 45 REFUSAL – MERELY ORNAMENTAL – CLASSES 018 AND 024 ONLY

Registration is refused because the applied-for mark as used on the specimen of record is merely a decorative or ornamental feature of the goods and, thus, does not function as a trademark to indicate the source of applicant’s goods and to identify and distinguish them from others.  Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§1051-1052, 1127; see In re Villeroy & Boch S.A.R.L., 5 USPQ2d 1451, 1454 (TTAB 1987); TMEP §§904.07(b), 1202.03 et seq.

 

Whether a designation functions as a mark depends on the commercial impression it makes on the relevant public; that is, whether purchasers would likely regard it as a source-indicator for the goods.  See In re Keep A Breast Found., 123 USPQ2d 1869, 1879 (TTAB 2017) (quoting In re Eagle Crest Inc., 96 USPQ2d 1227, 1229 (TTAB 2010)); TMEP §1202.  The specimen and any other relevant evidence of use is reviewed to determine whether an applied-for mark is being used as a trademark.  In re Bose Corp., 546 F.2d 893, 897, 192 USPQ 213, 216 (C.C.P.A. 1976); In re Volvo Cars of N. Am., Inc., 46 USPQ2d 1455, 1459 (TTAB 1998).

 

In this case, the mark as shown on the specimen would be perceived as merely a decorative or ornamental feature of the goods because the parrot design appears on the front portion of the backpack as part of an animated animal design whereas the wording “TALKING TOMS & FRIENDS” appears on the label for the backpack, thereby the applied-for mark appearing as an ornamental design on the backpack. Additionally, the parrot design appears on a pillow case with other animated animals with the wording “TALKING TOMS & FRIENDS” appearing in the top left-hand corner, thereby appearing as the ornamental design of the pillow case and “TALKING TOMS & FRIENDS” being the source indicator for both of the goods.

 

In appropriate circumstances, applicant may overcome this refusal by satisfying one of the following options:

 

(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 proper trademark use for each international class identified in the application or amendment to allege use.

 

(2)        Amend to the Supplemental Register, which is a second trademark register for marks not yet eligible for registration on the Principal Register, but which may become capable over time of functioning as source indicators. 

 

(3)        Claim acquired distinctiveness under Trademark Act Section 2(f) by submitting evidence that the applied-for mark has become distinctive of applicant’s goods; that is, proof that applicant’s extensive use and promotion of the mark has allowed consumers now directly to associate the mark with applicant as the source of the goods.

 

(4)        Submit evidence that the applied-for mark is an indicator of secondary source; that is, proof that the mark is already recognized as a source indicator for other goods or services that applicant sells/offers.    

 

(5)        Amend the filing basis to intent to use under Section 1(b).  This option will later necessitate additional fee(s) and filing requirements.

 

For an overview of the response options above and instructions on how to satisfy each option online using the Trademark Electronic Application System (TEAS) form, see the Ornamental Refusal webpage.

 

 

SPECIMEN – CLASS 024 ONLY

Digitally created or altered image or mockup is not an acceptable specimen.  Registration is refused because the specimen appears to consist of a digitally created or altered image or a mockup of a depiction of the mark on the goods or their packaging and does not show the applied-for mark as actually used in commerce in International Class 024.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a), (c); TMEP §§904.04(a)(iii), 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).  “Use in commerce” means (1) a bona fide use of the applied-for mark in the ordinary course of trade (and not merely to reserve a right in the mark), (2) the mark is placed in any manner on the goods, packaging, tags or labels affixed to the goods, or displays that directly associate the mark with the goods and have a point-of-sale nature, and (3) the goods are actually sold or transported in commerce.  See 15 U.S.C. §1127.

 

An image of a product or packaging that has been digitally created or altered to include the mark or a mockup of how the mark may be displayed on the product or packaging is not a proper specimen for goods because it does not show actual use of the mark in commerce.  See 15 U.S.C. §1127; 37 C.F.R. §2.56(c); TMEP §904.04(a)(i).

 

In this case, a green parrot design appears on a pillowcase, however the area around the pillow cases is pixelated and the wording on the pillowcase is pixelated and does not match the contours or coloring of the pillowcase, thereby appearing that the mark has been digitally placed on the goods.

 

Therefore, the specimen does not show actual use of the mark in commerce. 

 

Response options.  Applicant may respond to the specimen refusal by satisfying one of the following options 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 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.  For instructions on how to submit a different specimen using the online Trademark Electronic Application System (TEAS) form, see the Specimen webpage.

 

            Applicants submitting a webpage as a specimen for goods must include the URL and the date the page was accessed or printed either directly on the specimen itself or in a separate statement, supported by an affidavit or declaration under 37 C.F.R. §2.20 verifying such information.  See 37 C.F.R. §2.56(c); TMEP §§904.03(i), 1301.04(a).

 

(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.

 

If applicant submits an acceptable verified substitute specimen or amends to Section 1(b), the requirement below for additional information/documentation about the original specimen will be withdrawn.  The requirement below as to the original specimen will be made final if applicant submits a substitute specimen that is not acceptable or does not amend to Section 1(b), and does not also respond completely to the requirement below.

 

Additional information/documentation about original specimen(s) required.  To permit proper examination of the application record for compliance with use in commerce requirements, applicant must respond to the following requests for information and documentation about the specimen(s).  See 37 C.F.R. §2.61(b); TMEP §§814, 904.04(a)(iii).  A specimen must show the mark as actually used in commerce, which means use in the ordinary course of trade, and not merely to reserve a right in the trademark.  15 U.S.C. §§1051, 1052, 1127.  Because the specimen of record appears to be digitally created or altered, or is a mockup, further information is necessary to determine whether the specimen is in actual use in commerce. 

 

Answer for each specimen/photograph/image previously provided.  For any website source, provide a digital copy of the entire webpage from top to bottom, as rendered in an Internet browser, that includes the URL and access or print date.  TMEP §710.01(b) (citing In re I-Coat Co., 126 USPQ2d 1730, 1733 (TTAB 2018)). 

 

(1)        Identify the particular good(s) listed in the application for which the specimen(s) was submitted to show use of the mark.

 

(2)        Explain whether the specimen was created for submission with this application.  If so, specify the date each specimen was created.  If applicant used the image(s) of the goods shown in the specimen(s) from a third-party website, provide the URL of the website and a digital copy of relevant webpage(s) for each image.

 

(3)        Provide information about and examples of how applicant’s goods appear in the actual sales environment.

(a)        If sold in stores, provide a representative sample of the name(s) of the stores and of photographs showing the goods for sale in the named stores, such as photographs of the sales displays or goods on shelves with the mark. 

(b)        If sold online, provide a representative sample of the name(s) of the online retailers, the website URL(s) for each named retailer, and a digital copy of the webpages showing the goods for sale on the named website.

(c)        If sold in another type of sales environment (e.g., catalogs, trade shows), identify the environment and provide photographs and/or documentation showing the goods for sale in that environment. 

 

(4)        If the information in question (3) about how the goods appear in the actual sales environment is not available to applicant, please describe how applicant’s goods are sold or transported and provide photographs and other documentation showing how applicant’s mark appears on the goods and/or its packaging when the goods are sold or transported to or within the United States.

 

(5)        For each category of sales environment specified in response to questions (3) and (4), specify when the goods bearing the mark were first available for purchase within the United States, the date of the first sale of the goods to or within the United States, and whether the goods are still for sale to or within the United States in that environment.

 

(6)        For the goods identified in response to question (1), provide documentation that shows payment or other consideration made for the goods, redacting personal or private information of buyers as necessary.

 

Failure to comply with a requirement to furnish information is grounds for refusing registration.  In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.  Merely stating that information is available on applicant’s or a third party website or providing a hyperlink of such a website is an insufficient response and will not make the additional information or materials of record.  See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).

 

 

IDENTIFICATION OF GOODS

The identification of goods is indefinite and must be clarified because the wording in Class 009, “Application development tool programs for personal computers”, “computer game software featuring character recognition, voice recognition, touch sensitivity, light sensitivity, gravity sensitivity”, “computer game software for electronic computer apparatus featuring interactive and multimedia functions that enable the user to integrate text, audio, graphics, still images and moving pictures”, “computer game software”, “interactive multimedia computer game software programs”, and “software for enabling video computer and on-line games to be run on multiple driven interactive video game software” must be clarified as being downloadable or recorded software in Class 009 or as non-downloadable software in Class 042.

 

Further, the wording “downloadable ring tones, music, video recordings, and electronic games featuring music, animations and electronic games, via the internet and wireless devices” must be clarified as to the nature of the “electronic games”, for example “game software”.

 

Additionally, the wording “note books” in Class 016 must be clarified as being printed in nature. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

 

 

Applicant may adopt the following identification, if accurate: 

 

 

Class 009: Downloadable application development tool programs for personal computers; Downloadable computer game software featuring character recognition, voice recognition, touch sensitivity, light sensitivity, gravity sensitivity; Downloadable computer game software for electronic computer apparatus featuring interactive and multimedia functions that enable the user to integrate text, audio, graphics, still images and moving pictures; Downloadable computer game software; decorative magnets; digital media, namely, downloadable audio, video, and multimedia files, featuring music, motion picture and animated cartoon characters; downloadable computer game software for playing video, computer and on-line games; downloadable ring tones, music, video recordings, and electronic game software featuring music, animations and electronic games, via the internet and wireless devices; downloadable software for developing, designing, modifying, recording and customizing sound and speech; downloadable software for developing, designing, modifying, recording and customizing video, computer and on-line games; downloadable video game software featuring touch and voice control; Downloadable interactive multimedia computer game software programs; Downloadable software for enabling video computer and on-line games to be run on multiple driven interactive video game software

 

 

Class 016: Printed note books; pads, namely, desk pads, art pads, drawing pads, ink pads; stationery; stickers; writing pads, memo pads, writing paper

 

 

Class 018: all-purpose carrying bags; backpacks; handbags; school satchels

 

 

Class 024: bed linen; bedspreads; pillowcases

 

 

Class 042: Providing temporary use of on-line non-downloadable software application development tool programs for personal computers for {specify the function of the programs, e.g., for use in database management, for use as a spreadsheet, etc. and if content- or field-specific, the field of use}; Providing online non-downloadable computer game software featuring character recognition, voice recognition, touch sensitivity, light sensitivity, gravity sensitivity; Providing online non-downloadable computer game software for electronic computer apparatus featuring interactive and multimedia functions that enable the user to integrate text, audio, graphics, still images and moving pictures; Providing online non-downloadable computer game software; Providing online non-downloadable interactive multimedia computer game software programs; Providing temporary use of on-line non-downloadable software for enabling video computer and on-line games to be run on multiple driven interactive video game software

 

 

Applicant may amend the identification to clarify or limit the goods, but not to broaden or expand the goods 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 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.

 

CLASSIFICATION OF GOODS AND SERVICES

If applicant adopts the suggested amendment of the identification of goods and services, then applicant must amend the classification to International Classes 009, 016, 018, 024, and 042.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§805, 1401.

 

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS

The application references goods and services based on use in commerce in more than one international class; therefore, applicant must satisfy all the requirements below for each international class:

 

(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 fee already paid (view the USPTO’s current fee schedule).  Specifically, the application identifies goods and services based on use in commerce that are classified in at least 5 classes; however, applicant submitted a fee sufficient for only 4 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.

 

(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. The current specimen is not acceptable for any international class.  See more information about specimens.

 

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). 

 

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).

 

(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 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).

 

For an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.

 

 

RESPONSE GUIDELINES

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.

 

 

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

 

 

If the Applicant has any questions or requires assistance in responding to this Office Action, please telephone the assigned Examining Attorney.

 

 

 

O'Brien, Jennifer

/Jennifer O'Brien/

Examining Attorney

Law Office 120

(571)272-4579

Jennifer.O'Brien@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 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 April 12, 2022 for

U.S. Trademark Application Serial No. 97265925

 

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.