UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

 

Serial Number  76/596794

 

This application has been reinstated by the Commissioner for Trademarks.  The Office records have been searched again and no similar registered or pending mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02. The applicant is further advised that the amended identification is acceptable and has been entered into the record.  However, the requirement for a foreign certificate is now made FINAL for the reasons set forth below. 

 

Requirement Made Final – Foreign Certificate Required

 

The applicant was previously advised that it must submit a copy of the foreign registration.  It was further noted that the where the foreign certificate of registration is not written in English, then applicant must provide an English translation signed by the translator.  See TMEP §§1004.01 and 1004.01(b).

 

It is noted that the instant application was filed relying upon a claim of a bona fide intention to use the mark in commerce under Trademark Act Section 1(b), 15 U.S.C. §1051(b), and on a foreign registration under Section 44(e), 15 U.S.C. §1126(e).  However, an application based on a foreign registration must satisfy the following requirements:

 

(1)        Applicant must submit a true copy, a photocopy, a certification, or a certified copy of a registration of the mark in applicant's country of origin. Applicant's country of origin must either be a party to a convention or treaty relating to trademarks to which the United States is also a party or extend reciprocal registration rights to nationals of the United States by law.  See TMEP §§1002 et seq. and 1004.01 et seq.

 

(2)   An English translation of the foreign registration must also be submitted if the foreign certificate of registration is not written in English. The translator should sign the translation.  TMEP §1004.01(b).

 

(3)   The following statement must also be included: "Applicant has had a bona fide intention to use the mark in commerce on or in connection with the identified goods or services as of the application filing date." This statement must be verified in an affidavit or a signed declaration under 37 C.F.R. § §2.20 and 2.33.

 

Trademark Act Section 44(e), 15 U.S.C. § 1126(e); 37 C.F.R. §2.34(a)(3); TMEP §806.01(d).

 

Here, the applicant has not complied with element 1 or 2; namely, the applicant has not submitted a true copy, a photocopy, a certification, or a certified copy of a registration of the mark in applicant's country of origin nor an English translation of the foreign registration.  In an application under §1 or §44 of the Trademark Act, the applicant may claim more than one basis, if the applicant satisfies all requirements for each basis claimed.  37 C.F.R. §2.34(b)(1). However, because the applicant has not provided the redefined copy of the foreign registration, the applicant may not proceed relying upon under Section 44(e).  Therefore, because the applicant has neither satisfied the requirement nor deleted the basis, the requirement is believed proper and is now made FINAL.

It is noted that the applicant may overcome the final requirement by supplying the required foreign registration or by amending the application to assert a different basis for filing the application and submitting the requirements for the new basis. TMEP §§806.03 et seq.

 

In this case, applicant may wish to amend the application to assert a 44(d), claim of priority basis.

 

Options

If applicant fails to respond to this final action within six months of the mailing date, the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond to this final action by: 

 

(1)     submitting a response that fully satisfies all outstanding requirements, if feasible (37 C.F.R. §2.64(a)); and/or

 

(2)     filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class (37 C.F.R. §§2.6(a)(18) and 2.64(a); TMEP §§715.01 and 1501 et seq.; TBMP Chapter 1200).

 

In certain circumstances, a petition to the Director may be filed to review a final action that is limited to procedural issues, pursuant to 37 C.F.R. §2.63(b)(2).  37 C.F.R. §2.64(a).  See 37 C.F.R. §2.146(b), TMEP §1704, and TBMP Chapter 1201.05 for an explanation of petitionable matters.  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

 

 

Ingrid C. Eulin

Examining Attorney

Law Office 111

(571) 272-9380

(571) 273 -9380 (fax)

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond formally using the Office’s Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://www.gov.uspto.report/teas/index.html and follow the instructions, but if the Office Action has been issued via email, you must wait 72 hours after receipt of the Office Action to respond via TEAS).
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above and include the serial number, law office number and examining attorney’s name in your response.

 

STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.