Offc Action Outgoing

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:

After review of applicant’s response received on 08/08/2013, the following is determined: the amendment to the drawing of the mark is not acceptable; the refusal to register on the ground of likelihood of confusion is maintained and continued; the requirement to submit a standard character claim is maintained and continued; the requirement to amend the identification of goods is maintained and continued.

AMENDMENT TO DRAWING OF THE MARK IS NOT ACCEPTABLE

Applicant has requested that the drawing of the mark be amended. The original drawing shows the mark as AIR-LOC; the amended drawing shows the mark as PREME-LOC.

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; TMEP §807.14. Determining whether a proposed amendment materially alters a mark involves comparing the proposed amended mark with the mark in the drawing filed with the original application. 37 C.F.R. §2.72; TMEP §807.14(d).

The test for material alteration is whether the modified mark retains what is the essence of the original mark; that is, whether the new and old forms 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. 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 Hacot-Columbier, 105 F.3d at 620, 41 USPQ2d at 1526 (quoting Visa Int’l Serv. Ass’n v. Life Code Sys., Inc., 220 USPQ at 743-44). Also, the addition of an element that would require a further search may be a factor in determining material alteration. In re Guitar Straps Online, LLC, 103 USPQ2d 1745, 1747 (TTAB 2012); In re Who? Vision Sys. Inc., 57 USPQ2d 1211, 1218 (TTAB 2000).

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; In re Who? Vision Sys., Inc., 57 USPQ2d 1211 (holding proposed amendment from “TACILESENSE” to “TACTILESENSE” to be material alteration due to the difference in meaning or connotation between the marks); In re CTB Inc., 52 USPQ2d 1471 (TTAB 1999) (holding proposed amendment of TURBO and design to the typed word TURBO to be a material alteration due to the design being distinctive matter). Specifically, the proposed amendment would materially alter the mark in the initial application because PREME-LOC has a different commercial impression than AIR-LOC.

Accordingly, the proposed amendment will not be entered; the previously accepted drawing of the mark will remain operative. TMEP §807.17. Applicant may respond to this issue by arguing in favor of the proposed amendment and/or requesting that the proposed amended drawing be withdrawn. See TMEP §§714.05(a), 807.17.

If applicant responds using the Trademark Electronic Application System (TEAS) response form, applicant may withdraw the proposed amended drawing by (1) answering “yes” to the TEAS response form wizard question for making a “miscellaneous statement;” (2) checking the box for “miscellaneous statement;” and (3) inserting in the free form text field wording that requests withdrawal of the amended drawing, such as: “Applicant requests withdrawal of the proposed amended drawing submitted on 08/08/2013.”

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

/Mark Sparacino/

Trademark Attorney

US Patent and Trademark Office

Law Office 103

571-272-9708

Mark.Sparacino@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.