To:
`Subject:
`Sent:
`Sent As:
`
`STEPHANIE S. BUNTIN(ipdocket@h2law.com)
`U.S. Trademark Application Serial No. 90521815 - - 118681.00005
`January 19, 2024 12:44:54 PM EST
`tmng.notices@uspto.gov
`
`Attachments
`
`United States Patent and Trademark Office (USPTO)
`Office Action (Official Letter) About Applicant’s Trademark Application
`
`U.S. Application Serial No.  90521815
`
`Mark:  
`
`Correspondence Address:  
`Stephanie S. Buntin
`HOWARD & HOWARD ATTORNEYS PLLC
`450 WEST FOURTH STREET
`ROYAL OAK MI 48067
`UNITED STATES
`
`Applicant:   Alvadore Holdings, Inc.
`
`Reference/Docket No.  118681.00005
`
`Correspondence Email Address:   ipdocket@h2law.com
`
`
`
`
`
`
`REQUEST FOR RECONSIDERATION AFTER FINAL ACTION DENIED
`
`Issue date:   January 19, 2024
`
`
`Applicant’s request for reconsideration is denied.  See 37 C.F.R. §2.63(b)(3). The trademark
`examining attorney has carefully reviewed applicant’s request and determined the request did not: (1)
`raise a new issue, (2) resolve all the outstanding issues, (3) provide any new or compelling evidence
`with regard to the outstanding issues, or (4) present analysis and arguments that were persuasive or
`shed new light on the outstanding issues. TMEP §§715.03(a)(ii)(B), 715.04(a).
`
`Accordingly, the following refusal made final in the Office action dated July 1, 2023 is  maintained
`and continued: 
`
`
`•
`
`Specimen Does Not Show Direct Association Between Mark and Services
`
`
`See TMEP §§715.03(a)(ii)(B), 715.04(a).  
`
`
`

`

`This refusal is described in more detail below.
`
`SPECIMEN DOES NOT SHOW DIRECT ASSOCIATION BETWEEN MARK AND
`SERVICES
`
`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  035. 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 statement of 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)).
`
`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)).
`
`Applicant’s services consist of “On-line retail store services featuring clothing, headwear, glassware,
`mugs, and posters” in International Class 035. However, both the first and second specimens show the
`mark only on the back of a sweatshirt featured in applicant’s online store. As a result, the applied-for
`mark appears only as a design element on one of applicant’s clothing products. There is no connection
`between online retail store services and the mark, as consumers would not interpret a design on the
`back of one product for sale in applicant’s shop as a source indicator for applicant’s store services.
`Thus, there is no direct association between the applied-for mark and applicant’s specified services in
`International Class 035.
`
`In the Response to Office Action and Request for Reconsideration, applicant argues that because the
`specimen shows the applied-for mark on an article of clothing for sale on applicant’s online retail store
`website, and because the words “merch,” “add to cart,” and “payment” appear in the specimen, a direct
`association exists between the mark and “On-line retail store services featuring clothing, headwear,
`
`

`

`glassware, mugs, and posters.” These arguments are unpersuasive. The mark on the sweatshirt shows
`an association between the mark and the sweatshirt, not between the mark and applicant’s retail store
`services. The fact that the goods containing the mark are for sale in applicant’s online retail store does
`not create a connection between the mark and the online retail store services themselves.
`
`In applicant’s Request for Reconsideration, applicant has submitted a substitute specimen that consists
`of a screenshot of the Google.com search results for “rebel cannabis company.” The search results only
`indicate that applicant provides retail store services featuring cannabis products. The search results do
`not show that applicant sells any other type of goods. Therefore, the substitute specimen does not show
`the applied-for mark in use in commerce in connection with applicant’s specified services, “On-line
`retail store services featuring clothing, headwear, glassware, mugs, and posters.”
`
`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 option. Applicant may respond to this refusal by submitting, for each applicable
`international class, a different specimen (a verified “substitute” specimen) that (a) was in actual use in
`commerce prior to the expiration of the deadline for filing the statement of use and (b) shows the mark
`in actual use in commerce for the services identified in the statement of 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 prior to expiration of the filing deadline for
`filing a statement of use.” The substitute specimen cannot be accepted without this statement.
`
`Applicant may not withdraw the statement of use. See 37 C.F.R. §2.88(f); TMEP §1109.17.
`
`For an overview of this response option and instructions on how to submit a different specimen using
`the online Trademark Electronic Application System (TEAS) form, see the Specimen webpage.
`
`If applicant has already filed an appeal with the Trademark Trial and Appeal Board, the Board will
`be notified to resume the appeal.   See TMEP §715.04(a).  
`
`If applicant has not filed an appeal and time remains in the response period for the final Office
`action, applicant has the remainder of that time to (1) file another request for reconsideration that
`complies with and/or overcomes any outstanding final requirement(s) and/or refusal(s), and/or (2) file a
`notice of appeal to the Board.  TMEP §715.03(a)(ii)(B).
`
`

`

`
`
`/Mallory Velten/
`Mallory Velten
`Trademark Examining Attorney
`Law Office 123
`(571) 272-2233
`Mallory.Velten@uspto.gov
`
`
`
`

`

`United States Patent and Trademark Office (USPTO)
`
`USPTO OFFICIAL NOTICE
`
`Office Action (Official Letter) has issued
`on January 19, 2024 for
`U.S. Trademark Application Serial No.  90521815
`
`A USPTO examining attorney has reviewed your trademark application and issued an Office
`action.  You must respond to this Office action 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) or the Electronic System for Trademark Trials and Appeals (ESTTA), as
`appropriate.  Your response and/or appeal must be received by the USPTO on or before 11:59
`p.m. Eastern Time of the last day of the response deadline.  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.  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.  
`
` 
`