To:
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`Subject:
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`Sent:
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`Sent As:
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`Attachments:
`
`Larry Melton (kevin.oliveira@ofplaw.com)
`
`U.S. Trademark Application Serial No. 88414165 - BIKING BRUHZ - 88842.0002
`
`July 26, 2019 12:02:23 PM
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`ecom104@uspto.gov
`
`United States Patent and Trademark Office (USPTO)
`Office Action (Official Letter) About Applicant’s Trademark Application
`
`U.S. Application Serial
`No. 88414165
`
`Mark:   BIKING BRUHZ
`
`Correspondence
`Address: 
`Kevin Oliveira
`Odin, Feldman &
`Pittleman PC
`1775 Wiehle Avenue,
`Suite 400
`Reston VA 20190-5159
`
`     
`    
`   
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`Applicant:   Larry Melton
`
`    
`
`Reference/Docket No.
`88842.0002
`
`Correspondence Email
`
`Address:  
`
`kevin.oliveira@ofplaw.com
`
`FINAL 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) and/or Electronic System for Trademark Trials and Appeals
`
`(ESTTA).   A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action.   
`
`Issue date:  July 26, 2019
`
`This Office acknowledges receipt of applicant’s communication dated July 24, 2019, in which applicant amended the identification of goods,
`disclaim the word “BIKING”, and submitted a specimen.
`
`The following requirements have been satisfied:
`
`Identification of Goods Requirement
`Disclaimer Requirement
`
`The examining attorney maintains and now makes FINAL the following refusal:
`
`Specimen Refusal
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`SPECIMEN REFUSAL
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`Registration is refused because the specimen in International Class 25 appears to be mere advertising material and thus the specimen fails to
`show the applied-for mark in use in commerce.  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).  Specifically, applicant submitted a webpage that displayed the mark and the goods but that does not provide a means of
`ordering the goods.
`
`Advertising materials are generally not acceptable as specimens to show use in commerce for goods.  See In re Kohr Bros., 121 USPQ2d 1793,
`1794 (TTAB 2017) (quoting In re Quantum Foods, Inc., 94 USPQ2d 1375, 1379 (TTAB 2010)); TMEP §904.04(b), (c).  Advertising materials
`may consist of the following:  online advertising banners appearing on search engine result pages and in social media; advertising circulars and
`
`brochures; price lists; listings in trade directories; and business cards.  See TMEP §904.04(b).  
`
`An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use 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).  
`
`Examples of specimens for goods include tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or
`packaging, and displays associated with the actual goods at their point of sale.  See TMEP §§904.03 et seq.  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. 
`
`TMEP §904.03(i).  
`
`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 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), for which no specimen is required.  This option will later necessitate
`additional fee(s) and filing requirements such as providing a specimen.
`
`For an overview of both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic
`
`Application System (TEAS) form, please go to the Specimen webpage.   
`
`RESPONSE GUIDANCE
`
`Applicant must respond within six months of the date of issuance of this final Office action or the application will be abandoned.  15 U.S.C.
`§1062(b); 37 C.F.R. §2.65(a).  Applicant may respond by providing one or both of the following:
`
`(1)      
`
`(2)      
`
`a response filed using the Trademark Electronic Application System (TEAS) that fully satisfies all outstanding requirements
`and/or resolves all outstanding refusals; and/or
`
`an appeal to the Trademark Trial and Appeal Board filed using the Electronic System for Trademark Trials and Appeals (ESTTA)
`with the required filing fee of $200 per class.
`
`37 C.F.R. §2.63(b)(1)-(2); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.
`
`In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural
`issues.  TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters).  There is a fee required for
`filing a petition.  37 C.F.R. §2.6(a)(15).
`
`TEAS PLUS OR REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS
`MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE:  Applicants who filed their application online using the lower-fee
`TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP
`§§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive
`correspondence from the USPTO by e-mail throughout the prosecution of the application.  See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820. 
`TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods
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`and/or services.  37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04.  However, in certain situations, TEAS Plus or TEAS RF
`applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional
`
`fee.    
`
`How to respond.   Click to file a response to this final Office action and/or appeal it to the Trademark Trial and Appeal Board (TTAB).
`
`/Donald Johnson/
`Examining Attorney
`Law Office 104
`571-272-7831
`don.johnson@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.
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`

`

`To:
`
`Subject:
`
`Sent:
`
`Sent As:
`
`Attachments:
`
`Larry Melton (kevin.oliveira@ofplaw.com)
`
`U.S. Trademark Application Serial No. 88414165 - BIKING BRUHZ - 88842.0002
`
`July 26, 2019 12:02:24 PM
`
`ecom104@uspto.gov
`
`United States Patent and Trademark Office (USPTO)
`
`USPTO OFFICIAL NOTICE
`
`Office Action (Official Letter) has issued
`on July 26, 2019 for
`U.S. Trademark Application Serial No. 88414165
`
`Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an
`official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.
`
`(1)  Read the official letter.
`
`(2)   Direct questions about the contents of the Office action to the assigned attorney below.   
`
`Johnson, Don
`/Donald Johnson/
`Examining Attorney
`Law Office 104
`571-272-7831
`don.johnson@uspto.gov
`
`Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or
`whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).
`
`(3)  Respond within 6 months (or earlier, if required in the Office action) from July 26, 2019, using the Trademark Electronic Application
`System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the
`Office action for more information about how to respond.
`
`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, if needed, to ensure you receive important USPTO notices about your application.
`
`·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use
`public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  
`All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”
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