To:
`
`Subject:
`
`Sent:
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`Sent As:
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`Ford, Kristin (kristin.lambert10@gmail.com)
`
`U.S. Trademark Application Serial No. 90872329 - WINE SINSATIONS.COM - N/A
`
`May 17, 2022 03:47:15 PM
`
`ecom119@uspto.gov
`
`Attachments:
`
`Attachment - 1
`
`United States Patent and Trademark Office (USPTO)
`Office Action (Official Letter) About Applicant’s Trademark Application
`
`U.S. Application Serial No. 90872329
`
`Mark:   WINE SINSATIONS.COM
`
`Correspondence Address:   
`
`      Ford, Kristin
`       27702 Cameron Ct
`  
`         Harrison Charter Towns MI 48045
`
`            
`          
`   
`
`          
`    
`
`Applicant:   Ford, Kristin
`
`Reference/Docket No. N/A
`
`Correspondence Email Address:     
`
`    kristin.lambert10@gmail.com
`
`COMBINED EXAMINER’S AMENDMENT/PRIORITY ACTION 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:   May 17, 2022
`
`  
`
`PRIORITY ACTION
`
`USPTO database searched; no conflicting marks found.   The trademark examining attorney has searched the USPTO database of registered
`and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d).   15 U.S.C. §1052(d);
`TMEP §704.02.
`
`Applicant must address issues shown below.  On May 12, 2022, the examining attorney and Kristin Ford discussed the issues below. 
`Applicant must timely respond to these issues.  See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §708.05.
`
`PLEASE NOTE:  The Office has received the applicant’s preliminary amendment filed on May 12, 2022.  The applicant’s substitute specimen
`
`is not accepted for the reason stated below.  
`
`Application Refused—Section 1(a)—Original Specimens in Application Do Not Indicate Use in Relation to the Identified Goods
`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 and/or 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).  The current specimen(s) do not demonstrate proper use of the proposed mark in relation to
`the goods specified in the application.
`
`Section 45 of the Trademark Act requires use of the mark “on the goods, their containers or the displays associated therewith, or on the tags or
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`labels affixed thereto”. 15 U.S.C. §1127; TMEP §§901.01, 904.03.  Material that functions merely to tell the prospective purchaser about the
`goods, or to promote the sale of the goods, is not acceptable to support trademark use. Similarly, leaflets, handbills, brochures, advertising
`circulars and other printed advertising material or informational inserts are generally not acceptable to show trademark use. In re MediaShare
`Corp., 43 USPQ2d 1304 (TTAB 1997); In re Schiapparelli Searle, 26 USPQ2d 1520 (TTAB 1993); In re Drilco Industrial Inc., 15 USPQ2d
`1671 (TTAB 1990); In re ITT Rayonier Inc., 208 USPQ 86 (TTAB 1980); In re Bright of America, Inc., 205 USPQ 63 (TTAB 1979); TMEP
`904.04(b).  However, an instruction sheet may be an acceptable specimen. In re Ultraflight Inc., 221 USPQ 903 (TTAB 1984); TMEP
`§§904.04(b), (c), 1301.04.
`
`In this case, the submitted specimens consist of (1) photographs of product packaging that show use of a different mark wherein the letter “I” of
`WINE appears as condom and one leg of the “W” appears as a wine bottle, and (2) a webpage showing the proposed mark with a shop now
`
`button.  
`
`Product Packaging Specimens Not Acceptable Because They Do Not Match the Applied-For Mark
`As an initial matter the specimens comprising the photographs of product packaging wherein the letter “I” in “WINE” appears as a condom is
`not acceptable because it is different from the applied for mark.  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 and/or 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).  The drawing shows the mark sought to be
`registered, and must be a substantially exact representation of the mark as used on or in connection with the goods and/or services, as shown by
`
`the specimen.  37 C.F.R. §2.51(a); TMEP §807.12(a).  
`
`With respect to the product packaging specimens, the mark as depicted on the drawing does not agree with the mark as it appears on the
`specimen(s) and clarification is required.  Specifically, the drawing page of the application displays the mark as the wording “WINE
`SinSations.com” appearing in stylized font with the letter “W” of “WINE” appearing inside a stemless wine glass and the letter “I” of
`“WINE” is depicted as a wine bottle with a liquid splash above it.   The wording is surrounded by an incomplete circle that resembles a wine
`stain ring.
`
`The specimen(s) however, depicts the mark as the wording “WINE SinSations.com Condoms” appearing in stylized font with one leg of the
`letter “W” of “WINE” appearing as a wine bottle with the wording “Condoms” and a liquid splash above it located inside a large stemless wine
`glass and the letter “I” of “WINE” depicted as a condom.  The mark on the specimen does not match the mark in the drawing because there is
`no wine stain, there is the additional term “Condoms” and the differences in the depiction of the letter “I”.
`
`Because the mark in the drawing is not a substantially exact representation of the mark on these specimens, the applicant has failed to provide the
`required evidence of use of the applied-for mark in commerce on or in connection with the applicant’s goods.  See TMEP §807.12(a).  Therefore,
`registration is refused because the product packaging specimens do not show the applied-for mark in the drawing in use in commerce in
`connection with the goods listed in the application.  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).
`
`Please Note:  The applicant cannot amend the mark in the drawing to conform to the mark shown on the product packaging specimens, because
`the difference between these marks is significant and each mark creates a different commercial impression.  The USPTO will not accept an
`amended drawing submitted in response to this refusal because the changes would materially alter the drawing of the mark in the original
`application or as previously acceptably amended.  See 37 C.F.R. §2.72(a)-(b); TMEP §807.14.  Specifically, adding the term “condoms” as well
`as the depiction of the term condom would necessarily give a different commercial impression from the originally applied-for mark.
`
`Webpage Specimen Not Acceptable
`In addition, the submitted webpage specimen with the wording “shop now” is not acceptable.     Although the proposed mark is displayed on the
`specimen, the specimen is not acceptable to demonstrate use of the proposed mark with the goods listed in the application.  The specimen is not
`acceptable as a 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 or catalog 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)      
`(2)      
`(3)      
`
`A picture or sufficient textual description of the goods;
`The mark associated with the goods; and
`
`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
`
` 
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`(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, there is no “buy now” or “add to cart” button on
`the webpage specimen.  It is noted that clicking on the “shop now” button takes a user to a separate and distinct webpage at which point they can
`add an item to the cart and purchase the goods—a user cannot directly purchase the goods or add them to an online cart using only the depicted
`“shop now” button.   Accordingly, the submitted webpage is mere advertising, which is not acceptable as a specimen for goods.  See In re
`Yarnell Ice Cream, LLC, 2019 USPQ2d 265039, at *15-16 (TTAB 2019) (quoting In re Siny Corp., 920 F.3d 1331, 1336, 2019 USPQ2d 127099,
`
`at *2-3 (Fed. Cir. 2019)); see also Avakoff v. S. Pac. Co., 765 F.2d 1097, 1098, 226 USPQ 435, 436 (Fed. Cir. 1985); TMEP §904.04(b), (c).  
`
`Accordingly, registration is refused because the specimens do not show the applied-for mark in use in commerce in connection with any of the
`goods specified 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); In re Graystone Consulting Assocs., Inc., 115 USPQ2d 2035, 2037-38 (TTAB 2015); In re Chengdu AOBI Info. Tech.
`Co., 111 USPQ2d 2080, 2081-82 (TTAB 2011); TMEP §§904, 904.07(a).
`
`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.
`
`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).  Leaflets, handbills, advertising circulars, and
`other advertising materials are generally not acceptable specimens for goods.  See TMEP §§904.03 et seq.  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).  Please Note: 
`Any webpage printout or screenshot submitted as a specimen must include the webpage’s URL and the date it was accessed or
`
`printed.  37 C.F.R. §2.56(c).  
`
`(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.   
`
`Application Refused—Substitute Specimen Not Acceptable Because it is Not Properly Verified
`An application based on Trademark Act Section 1(a) must include a specimen, properly verified, showing the applied-for mark as actually used
`in commerce for each international class of goods and/or services identified in the application or amendment to allege use.  15 U.S.C. §§1051,
`
`1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).  
`
`In its preliminary amendment, the applicant provided a substitute specimen(s) that appears to show proper use of the applied-for mark in
`commerce but this specimen is not verified.  The USPTO does not accept materials submitted as specimens without proper verification.  See 37
`C.F.R. §§2.34(a)(1), 2.59(a)-(b)(1), 2.76(b)(2); In re Adair, 45 USPQ2d 1211, 1212 n.2 (TTAB 1997).    Accordingly, while the substitute
`specimen contained in the preliminary response filed on May 12, 2022 would be acceptable to demonstrate use of the applied-for mark in
`commerce, it cannot be accepted in this case because the applicant has not provided the proper declaration in support this specimen. 
`Accordingly, registration is refused because the substitute specimen does not show the applied-for mark in use in commerce in connection with
`any of the goods specified 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); In re Graystone Consulting Assocs., Inc., 115 USPQ2d 2035, 2037-38 (TTAB 2015); In re Chengdu AOBI Info. Tech.
`Co., 111 USPQ2d 2080, 2081-82 (TTAB 2011); TMEP §§904, 904.07(a).
`
`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
`
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`

`

`C.F.R. §2.56(b)(1), (c).  Please Note:  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 options.  Applicant may respond to this final specimen refusal by satisfying one of the following for each applicable international
`
`class:  
`
`(1)      
`
`(2)      
`
`(3)      
`
`Submit a verification of the previously submitted substitute specimen, attesting that it 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.  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.
`
`Submit a different and properly verified 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.  The substitute
`specimen cannot be accepted without the verified statement referenced in (1).
`
`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.   
`
`EXAMINER’S AMENDMENT
`
`Application has been amended as shown below.   As agreed to by the individual identified in the Priority Action section, the examining
`attorney has amended the application as shown below.   Please notify the examining attorney immediately of any objections.   TMEP §707.   In
`addition, applicant is advised that amendments to the goods and/or services are permitted only if they clarify or limit them; amendments that add
`to or broaden the scope of the goods and/or services are not permitted.  37 C.F.R. §2.71(a).
`
`Disclaimer
`The application is amended as follows:
`
`No claim is made to the exclusive right to use “ WINE” apart from the mark as shown.
`
`See 15 U.S.C. §1056(a); TMEP §§1213, 1213.08(a)(i).
`
`Mark Description Statement Amendment
`The application is amended as follows:
`
`The mark consists of the wording “WINE SinSations.com” appearing in stylized font with term “WINE” located above and
`off set to the left of the term “SinSations.com”.   The letter “W” of “WINE” appears inside a stemless wine glass and the letter
`“I” of “WINE” is depicted as a wine bottle with a liquid splash above it.
`  The wording is surrounded by an incomplete circle
`that resembles a wine stain ring.
`
`See 37 C.F.R. §2.52(b)(1); TMEP §807.07(a)(i), (a)(ii).
`
`Applicant’s Response
`There is no required format or form for responding to an Office action.  For this application to proceed further, the applicant must explicitly
`address each refusal and/or requirement raised in this Office action.  If the action includes a refusal, the applicant may provide arguments and/or
`evidence as to why the refusal should be withdrawn and the mark should register.  The applicant may also have other options specified in this
`Office action for responding to a refusal and should consider those options carefully.  To respond to requirements and certain refusal response
`options, the applicant should set forth in writing the required changes or statements.  For more information and general tips on responding to
`USPTO Office actions, response options, and how to file a response online, Please see “ Responding to Office Actions” and the informational
`video “Response to Office Action ” on the USPTO’s website.
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`If the applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the
`application, the application process will end and the trademark will fail to register.  See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a); TMEP
`§§718.01, 718.02.  Additionally, the USPTO will not refund the application filing fee, which is a required processing fee.  See 37 C.F.R.
`§§2.6(a)(1)(i)-(iv), 2.209(a); TMEP §405.04.
`
`When an application has abandoned for failure to respond to an Office action, an applicant may timely file a petition to revive the application,
`which, if granted, would allow the application to return to active status.  See 37 C.F.R. §2.66; TMEP §1714.  The petition must be filed within
`two months of the date of issuance of the notice of abandonment and may be filed online via the Trademark Electronic Application System
`(TEAS) with a $100 fee.  See 37 C.F.R. §§2.6(a)(15)(ii), 2.66(a)(1), (b)(1)
`
`If an applicant is not
`Responses to Office actions must be properly signed.   See 37 C.F.R. §§2.62(b), 2.193(e)(2); TMEP §§712, 712.01. 
`represented by a U.S.-licensed attorney, the response must be signed by the individual applicant or someone with legal authority to bind a juristic
`applicant (e.g., a corporate officer or general partner).  See 37 C.F.R. §2.193(e)(2)(ii); TMEP §§611.03(b), 611.06(b)-(h), 712.01.  In the case of
`
`joint applicants, all must sign.  37 C.F.R. §2.193(e)(2)(ii); TMEP §611.06(a).  
`
`If an applicant is represented by a U.S.-licensed attorney authorized to practice before the USPTO, the attorney must sign the response.  37
`C.F.R. §2.193(e)(2)(i); TMEP §§611.03(b), 712.01.  The only attorneys who may sign responses are (1) attorneys in good standing with a bar of
`the highest court of any U.S. state or territory, or (2) Canadian trademark attorneys or agents reciprocally recognized by the USPTO’s Office of
`Enrollment and Discipline (OED) who are appointed in connection with a U.S.-licensed attorney.  See 37 C.F.R. §§2.17(a), 11.14(a), (c), (e). 
`Foreign attorneys, other than recognized Canadian trademark attorneys or agents, do not have authority to sign responses.  See 37 C.F.R.
`§§2.17(e), 11.14(c)(1), (e).  If an applicant is initially represented by an attorney, and then later retains another U.S.-licensed attorney from a
`different firm, the newly retained attorney may not sign responses until the applicant files a new power and/or revocation of attorney.  See 37
`C.F.R. §2.18(a)(7); TMEP §604.03.  Please Note:  In all cases, the signer must be identified by first and last name and title or position.  37
`C.F.R. §2.193(d).
`
`If the applicant has technical questions about the TEAS response to Office action form, applicant can review the electronic filing tips available
`online at http://www.uspto.gov/teas/eFilingTips.htm and email technical questions to TEAS@uspto.gov.
`
`If the applicant or its appointed attorney has any questions or needs assistance in responding to this Office action, please telephone the assigned
`examining attorney.
`
`/Michael Tanner/
`Michael Tanner
`Trademark Attorney
`Law Office 119
`Telephone: 571-272-9706
`Email: Michael.Tanner@uspto.gov
`
`How to respond.   Click to file a response to this nonfinal Office action.
`
`RESPONSE GUIDANCE
`Missing the response deadline to this letter will cause the application to abandon.   The response must be received by the USPTO
`before midnight Eastern Time of the last day of the response period.   TEAS 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:
`
`Ford, Kristin (kristin.lambert10@gmail.com)
`
`U.S. Trademark Application Serial No. 90872329 - WINE SINSATIONS.COM - N/A
`
`May 17, 2022 03:47:18 PM
`
`ecom119@uspto.gov
`
`United States Patent and Trademark Office (USPTO)
`
`USPTO OFFICIAL NOTICE
`
`Office Action (Official Letter) has issued
`on May 17, 2022 for
`U.S. Trademark Application Serial No. 90872329
`
`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.
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