UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.

 

ISSUE/MAILING DATE: 10/8/2015

 

This Office action is in response to applicant’s communication filed on July 22, 2015.

 

The Office has reassigned this application to the undersigned trademark examining attorney.

 

In the  Office action dated March 2, 2015, the following issues were raised:

 

1)      Registration of the applied-for mark was refused because of a likelihood of confusion with the mark in U.S. Registration No. 4609940;

2)      Applicant was required to provide an accurate and concise description of the mark; and

3)      Applicant was required to perfect its Section 44(e) filing basis.

 

On July 22, 2015, applicant filed correspondence in which:

 

1)      Applicant argued against a likelihood of confusion with the mark in U.S. Registration No. 4609940;

2)      Applicant provided a description of the mark; and

3)      Applicant submitted the required statements to perfect a Section 44(e) filing basis.

 

In light of applicant’s arguments and amendments, the refusal because of a likelihood of confusion with the mark in U.S. Registration No. 4609940 is withdrawn.

 

The requirements for an accurate and concise description of the mark and a verified statement of applicant’s bona fide intention to use the mark in commerce are deemed satisfied.

 

However, applicant must address the following issue inadvertently omitted from the Office action of March 2, 2015.

 

Foreign Registration Expired

 

The application specifies Trademark Act Section 44(e) as the sole filing basis.  See 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3).  Although the application includes a copy of a foreign registration, the foreign registration on which this application is based expired on March 27, 2010.  For an application filed under Section 44(e), the foreign registration must be in force at the time the United States issues a registration based on that foreign registration.  37 C.F.R. §2.34(a)(3)(iii); In re Societe D’Exploitation de la Marque Le Fouquet’s, 67 USPQ2d 1784, 1788-89 (TTAB 2003); TMEP §1004.01(a).

 

Therefore, applicant must provide a certificate of renewal or other certification from the intellectual property office of the foreign country or a copy of the foreign registration that shows that the foreign registration has been renewed and will be in force at the time the registration issues in the United States.  37 C.F.R. §2.34(a)(3)(iii); TMEP §1004.01(a).  If the certificate of renewal or other certification is not written in English, applicant must also provide an English translation.  See 37 C.F.R. §2.34(a)(3)(iii); TMEP §1004.01(a)-(b).  The translation should be signed by the translator.  See TMEP §1004.01(b).

 

Comments

 

If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney.

 

 

/Nicholas A. Coleman/

Examining Attorney

Law Office 115

Phone: (571) 272-4917

Email: nicholas.coleman@uspto.gov

 

TO RESPOND TO THIS LETTER:  Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application.  For technical assistance with online forms, e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned trademark examining attorney.  E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

 

All informal e-mail communications relevant to this application will be placed in the official application record.

 

WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants).  If an applicant is represented by an attorney, the attorney must sign the response. 

 

PERIODICALLY CHECK THE STATUS OF THE APPLICATION:  To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/.  Please keep a copy of the TSDR status screen.  If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199.  For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

 

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 10/8/2015 FOR U.S. APPLICATION SERIAL NO. 76581337

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 10/8/2015 (or sooner if specified in the Office action).  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System (TEAS) response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.