Statement of Use Refusals

(These are actual USPTO trademark application refusals (office actions) with some redactions)


Trademark Act Sections 1, 2 and 45 – Title of Single Work Refusal

 Registration is refused because the applied-for mark, as used on the specimen of record, is used only as the title of a single creative work, namely, the title of a specific book or publication, it does not function as a trademark to identify and distinguish applicant’s goods from those of others and to indicate the source of applicant’s goods.  Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§1051-1052, 1127; see Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1162-63, 64 USPQ2d 1375, 1378-79 (Fed. Cir. 2002); In re Cooper, 254 F.2d 611, 615-16, 117 USPQ 396, 399-400 (C.C.P.A. 1958); TMEP §§904.07(b), 1202.08.

 

Single creative works include works in which the featured content does not change significantly, whether that work is in printed, recorded, or electronic form.  TMEP §1202.08(a); see Mattel, Inc. v. Brainy Baby Co., 101 USPQ2d 1140, 1143-44 (TTAB 2011) (holding that LAUGH & LEARN, with design, was merely the title of a single work, where the mark was used as the title of a pre-recorded VHS tape and DVD, the VHS tape and DVD contained the same featured program, and the DVD contained “minor enhancements” such as bloopers and previews).

 

Applicant may respond to this refusal by submitting evidence that the applied-for mark is used to identify a series, rather than a single work.  See TMEP §1202.08(c).  The name for a series of creative works indicates that each work in the series comes from the same source as the others.  In re Scholastic, Inc., 23 USPQ2d 1774, 1776 (TTAB 1992); see TMEP §1202.08(c).  Evidence of a series includes copies of at least two different book covers or packaging for recorded works (not two copies of the same work) that show the mark as a source identifier for the series as well as distinguish the mark from the individual titles of the works.  See TMEP §1202.08(c).

 

Applicant may not withdraw the statement of use.  37 C.F.R. §2.88(g); TMEP §1109.17.

 

The title of a single work, even an arbitrary title, is considered descriptive of the contents of the work itself “and is not associated in the public mind with the publisher, printer or bookseller;” whereas “[t]he name for a series, at least while it is still being published, has a trademark function in indicating that each [work] of the series comes from the same source as the others.”  In re Cooper, 254 F. 2d 611, 615, 117 USPQ 396, 400 (C.C.P.A. 1958).

 Mark does not appear on Specimen

The specimen is not acceptable because the applied-for mark does not appear anywhere on the specimen [the statement of use submitted was a picture of employees wearing t-shirts with logos that were not clearly visible standing by bottles that might have had the trademark on them but they weren’t clearly visible].  A statement of use must include a specimen showing the applied-for mark in use in commerce for each class of goods and/or services specified in the statement of use.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.56(a), 2.88(b)(2); TMEP §§904, 1109.09(b).



INTENT TO USE OFFICE ACTION

The above-identified APPLICATION [   ] IS ABANDONED because the statement of use was filed after the six-month period following issuance of the notice of allowance.  The statement of use is untimely and will not be reviewed.  All fees will be refunded in due course.


A statement of use is required to be filed within six months following the issuance of a notice of allowance or during an existing extension period.  15 U.S.C. §1051(d); 37 C.F.R. §2.88(a); TMEP §1109.04.  In this case, the statement of use was due on or before January 31, 2013.  However, the statement of use was filed on February 1, 2013.


 APPLICANT’S OPTIONS:  Applicant has the option to (1) file a petition to revive this application under 37 C.F.R. §2.66 before expiration of the two month period after the issuance date of the notice of abandonment (the notice of abandonment will issue shortly after this Office action) or (2) file a new application.

MARK DOES NOT FUNCTION AS A TRADEMARK: IMPROPER SPECIMEN OF USE FOR SERVICES

Registration is refused because the proposed mark, as used on the specimen of record, does not function as a service mark to indicate the source of the services.  Trademark Act Sections 1, 2, 3 and 45, 15 U.S.C. §§1051, 1053 and 1127; In re Moody’s Investors Service Inc., 13 USPQ2d 2043 (TTAB 1989); In re Signal Companies, Inc., 228 USPQ 956 (TTAB 1986); In re Hughes Aircraft Co., 222 USPQ 263 (TTAB 1984); TMEP §§1301.02 et seq.

 

The specimen is unacceptable as evidence of actual service mark use because it does not show use of the mark in relation to the identified services.  The specimen shows the mark on a bag, but does not show use of the mark in connection with applicant’s actual advertising and marketing services.  The applicant must submit a specimen showing the mark as it is used in commerce in relation to the services.  37 C.F.R Section 2.56.  Examples of acceptable specimens are signs, brochures or advertisements that show the mark used in the sale or advertising of the services provided for others.  TMEP section 1301.04 et seq.


The trademark examining attorney will reconsider this refusal if applicant submits both (1) a substitute specimen showing use as a service mark, and (2) a written statement that “the substitute specimen was in use in commerce at least as early as the application filing date,” verified with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.59(a); TMEP §904.09.


If an amendment of the dates-of-use clause is necessary in order to state the correct dates of first use, then applicant must verify the amendment with a notarized affidavit or a signed declaration in accordance with 37 C.F.R. §2.20.  37 C.F.R. §2.71(c).

 


SUBSTANTIVE REFUSAL – MARK DOES NOT FUNCTION AS A TRADEMARK

Registration is refused because the proposed mark, as used on the specimen of record, does not function as a trademark to identify and distinguish applicant’s goods from those of others and to indicate their source.  Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051-1052 and 1127; In re Remington Prods., Inc., 3 USPQ2d 1714 (TTAB 1987); TMEP §§1202 et seq.


The proposed mark, as used on the specimen, does not function as a trademark because it appears in one of several circles on the front of the packaging.  The wording in each of the circles does not appear with a TM or any other designation indicating traditional trademark use.  It is unlikely that consumers would view wording in a series of circles on applicant’s packaging as a trademark for goods.


Applicant may respond to this refusal by submitting the following:

(1)   A substitute specimen showing the mark in use in commerce for the goods specified in the statement of use; and

(2)   The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §§2.20, 2.33:  “The substitute specimen was in use in commerce prior to the expiration of the time allowed applicant for filing a statement of use.”  37 C.F.R. §2.59(b)(2); TMEP §§904.05, 904.07(b).  If submitting a 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.


Examples of acceptable specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the goods or packaging, or displays associated with the goods at their point of sale.  TMEP §§904.03 et seq.

 

SPECIMEN UNACCEPTABLE

The specimen is not acceptable because it consists of advertising material for goods.  Trademark Act Section 45 requires use of the mark “on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto.”  15 U.S.C. §1127; see 37 C.F.R. §2.56(b)(1); TMEP §§904.03, 904.04(b), (c).  In the instant matter, the wording DOUBLE TORNADO WAVE does not appear prominently in the catalog and is not easily recognized as a source indicator for the identified goods.  See TMEP §904.03(h).

Material that functions merely to tell prospective purchasers about the goods, or to promote the sale of the goods, is not acceptable to show trademark use.  TMEP §904.04(b).  Leaflets, handbills, brochures, advertising circulars and other printed advertising material, while normally acceptable for showing use in connection with services, generally are not acceptable specimens for showing trademark use in connection with goods.  See In re MediaShare Corp., 43 USPQ2d 1304, 1307 (TTAB 1997); In re Schiapparelli Searle, 26 USPQ2d 1520, 1522 (TTAB 1993); TMEP §§904.04(b), (c), 1301.04.

A statement of use must include a specimen showing the applied-for mark in use in commerce for each class of goods specified in the statement of use.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.56(a), 2.88(b)(2); TMEP §§904, 1109.09(b).

Answering Office Actions

There are no canned answers on how to answer office actions for the rejections received because there are no typical rejections, registration of a mark is specific to the facts involved. (See Function As A Mark for more Office Actions.) Some rejections are dependent not only on the trademark being proposed (very fact specific) but also on how the application is filled out, especially the specimens submitted. Sometimes just a better specimen is all it takes. Sometimes a better identification of goods and services. Sometimes parts of the trademark must be disclaimed. Sometimes the applicable law must be examined and arguments made that are very specific to the actual words and designs being proposed. It depends on what is being rejected and why.


Not every office action has an answer, some proposed trademarks just do not comply with U.S. Trademark Law and do not qualify for common law protection because they lack distinctiveness or lack acquired secondary meaning or the capability of acquiring secondary meaning.


If your trademark has value and you want to preserve the trade identity rights that you have already invested and secure more rights through federal registration, it may be best to hire a legal representative to answer your office action as prescribed within the USPTO Trademark Rules and Procedures. The cost of having a Not Just Patents ® Legal Services provide your Response to Office Action (ROA) and/or Amendment to Allege Use (AAU)(after an Intent-to-Use application) may be less than what you think and the time saved may be months or years. Better yet, have Not Just Patents ® Legal Services prepare your application (including choosing the best specimens) from the beginning.


Not Just Patents ® Legal Services can assist your business in identifying, creating and managing your Intellectual Property Rights from the ground up. Call us at (651) 500-7590 with questions.


Intellectual Property may be one of the best ways to invest in your business, at the end of the day getting the right help may make a huge difference.



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