Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.

 

ISSUE/MAILING DATE: 5/11/2010

 

This letter responds to applicant’s communication on April 28, 2010.  In the aforementioned communication, applicant submitted     a new drawing, mark description, disclaimer, affirmed a Section 44(e) filing basis and argued against the examining attorney’s refusal to register the mark under Trademark Act Section 2(d), 15 U.S.C. §1052(d). 

 

The disclaimer is acceptable and that requirement is now withdrawn.  TMEP §§713.02, 714.04.

 

The examining attorney has carefully considered applicant’s arguments in favor of registration but has found the unpersuasive.  The refusal under Section 2(d) is MAINTAINED AND CONTINUED.

 

Upon further consideration of the application, the examining attorney now raises the following new issue regarding the substitute drawing.  Every attempt is made to address all relevant issues in the first examination of trademark applications and the examining attorney regrets any inconvenience to the applicant that this may cause.  The refusal to register is MAINTAINED AND CONTINUED.

 

Drawing Requirement

 

Applicant has requested that the drawing of the mark be amended.  The amended drawing now includes the wording “Australian.”

 

An amendment to a mark will not be accepted if the change would materially alter the mark in the initial application.  37 C.F.R. §2.72; In re Who? Vision Sys., Inc., 57 USPQ2d 1211 (TTAB 2000) (holding proposed amendment of TACILESENSE to TACTILESENSE to be material alteration); In re CTB Inc., 52 USPQ2d 1471 (TTAB 1999) (holding proposed amendment of TURBO and design to typed word TURBO to be material alteration); TMEP §807.14. 

 

For example, if republication of the amended mark would be necessary in order to provide proper notice of the mark to third parties for opposition purposes, then the mark has been materially altered and the amendment is not permitted.  In re Who? Vision Sys. Inc., 57 USPQ2d at 1218.  “The modified mark must contain what is the essence of the original mark, and the new form must create the impression of being essentially the same mark.”  In re Hacot-Columbier, 105 F.3d 616, 620, 41 USPQ2d 1523, 1526 (Fed. Cir. 1997) (quoting Visa Int’l Serv. Ass’n v. Life Code Sys., Inc., 220 USPQ 740, 743 (TTAB 1983)); see In re Nationwide Indus. Inc., 6 USPQ2d 1882, 1885 (TTAB 1988); TMEP §807.14.

 

The Office determines whether a proposed amendment materially alters a mark by comparing the proposed amended mark with the mark in the drawing filed with the original application.  TMEP §807.14(d). 

 

In the present case, the proposed amendment to the mark is refused because it would result in a material alteration of the mark depicted in the original application.  TMEP §807.17; see 37 C.F.R. §2.72.  Specifically, the proposed amendment would materially alter the mark in the initial application because the addition of the word “Australian” alters the commercial impression of the mark by clearly indicating that the goods are associated with the country Australia.

 

Accordingly, the proposed amendment will not be entered and thus, the previously acceptable drawing of the mark will remain operative.  Applicant must respond by arguing in favor of the proposed amendment and/or withdrawing the proposed amendment.  See TMEP §§714.03, 714.05(a), 807.17.

 

Section 44(d)

 

Applicant has confirmed and requested suspension pending applicant’s foreign registration for a Section 44(e) filing basis.  Therefore, upon applicant’s response, this application will be suspended pending receipt of applicant’s foreign registration.

 

Response Guidelines

 

There is no required format or form for responding to an Office action; however, applicant must explicitly address each refusal and/or requirement raised in this Office action.  If a refusal has issued, applicant may wish to argue against the refusal, i.e., submit arguments and/or evidence as to why the refusal should be withdrawn and the mark should register.  To respond to requirements, applicant should set forth in writing the required changes or statements and request that the Office enter them into the application record. 

 

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. §§2.62(b), 2.193(e)(2)(ii); TMEP §§611.03(b), 611.06 et seq., 712.01.  In the case of joint applicants, all must sign.  37 C.F.R. §2.193(e)(2)(ii); TMEP §611.06(a).  In addition, the proper signatory must personally sign or personally enter his/her electronic signature.  See 37 C.F.R. §2.193(a), (e)(2)(ii); TMEP §§611.01(b), 611.02.

 

The Office recommends applicants use the Trademark Electronic Application System (TEAS) to respond to Office actions online at http://www.gov.uspto.report/teas/index.html.  If applicant responds on paper via regular mail, the response should include the title “Response to Office Action” and the following information:  (1) the name and law office number of the examining attorney, (2) the serial number and filing date of the application, (3) the date of issuance of this Office action, (4) applicant’s name, address, telephone number and e-mail address (if applicable), and (5) the mark.  37 C.F.R. §2.194(b)(1); TMEP §302.03(a).

 

The following legal authorities govern the processing of trademark and service mark applications by the Office:  The Trademark Act of 1946, 15 U.S.C. §§1051 et seq.; The Trademark Rules of Practice, 37 C.F.R. Part 2; and the Office’s Trademark Manual of Examining Procedure (TMEP) (6th ed. 2009).  These legal resources are available online at http://www.gov.uspto.report/main/trademarks.htm.

 

“TMEP” refers to the Office’s Trademark Manual of Examining Procedure (6th ed. 2009), available on the United States Patent and Trademark Office website at http://www.gov.uspto.report/main/trademarks.htm.  The TMEP is a detailed administrative manual written by the Office to explain the laws and procedures that govern the trademark/service mark application, registration, and post registration processes.

 

If applicant has questions about its application or this Office action, please contact the assigned trademark examining attorney at the telephone number below.

 

 

 

/Dannean J Hetzel/

Trademark Examining Attorney

Law Office 106

Phone  571-272-8858

Fax      571-273-9106

 

 

RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the form at http://www.gov.uspto.report/teas/eTEASpageD.htm, waiting 48-72 hours if applicant received notification of the Office action via e-mail.  For technical assistance with the form, please e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned examining attorney.  Do not respond to this Office action by e-mail; the USPTO does not accept e-mailed responses.

 

If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response.  Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.

 

STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov.  When conducting an online status check, print and maintain a copy of the complete TARR screen.  If the status of your application has not changed for more than six months, please contact the assigned examining attorney.

 

 

 

 

 

                                                                

IMPORTANT NOTICE REGARDING YOUR TRADEMARK APPLICATION

 

Your trademark application (Serial No. 76655586) has been reviewed.   The examining attorney assigned by the United States Patent and Trademark Office (“USPTO”) has written a letter (an “Office action”) on 5/11/2010 to which you must respond (unless the Office letter specifically states that no response is required).  Please follow these steps:

 

1. Read the Office letter by clicking on this link http://tmportal.gov.uspto.report/external/portal/tow?DDA=Y&serial_number=76655586&doc_type=OOA&mail_date=20100511 OR go to  http://tmportal.gov.uspto.report/external/portal/tow and enter your serial number to access the Office letter.  If you have difficulty accessing the Office letter, contact TDR@uspto.gov.  

                                         

PLEASE NOTE: The Office letter may not be immediately available but will be viewable within 24 hours of this e-mail notification.

 

2. Contact the examining attorney who reviewed your application if you have any questions about the content of the Office letter (contact information appears at the end thereof).

 

3. Respond within 6 months, calculated from 5/11/2010 (or sooner if specified in the Office letter), using the Trademark Electronic Application System (TEAS) Response to Office Action form. If you have difficulty using TEAS, contact TEAS@uspto.gov. 

 

ALERT:

 

Failure to file any required response by the applicable deadline will result in the ABANDONMENT (loss) of your application.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise attempt to e-mail your response, as the USPTO does NOT accept e-mailed responses.