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: 2/26/2014

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

Search Results

 

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).

 

 

Although no similar registered or pending mark has been found that would bar registration, applicant must satisfy/address the following Signed Declaration Requirement:

 

Requirements to be Addressed

1.      Color Drawing Does Not Match Claim of No Color

2.      Color Differs on Drawing and Foreign Certificate

3.      Signed Declaration Required

 

Color Drawing Does Not Match Claim of No Color

 

Applicant has submitted a color drawing but has not claimed color as a feature of the mark.  Applications for marks depicted in color must include (1) a complete list of all the colors claimed as a feature of the mark and (2) a mark description of the literal and design elements that specifies where all the colors appear in those elements.  37 C.F.R. §§2.37, 2.52(b)(1); see TMEP §807.07(a)-(a)(ii).

 

An applicant may only amend a mark to delete color if the change would not materially alter the mark.  See 37 C.F.R. §2.72; TMEP §807.14. 

 

Therefore, applicant must either submit (1) a black and white substitute drawing, or (2) submit  color claim and a mark description of all the colors in the mark.  37 C.F.R. §§2.37, 2.52(b)(1); see TMEP §807.07(a)-(a)(ii).  Generic color names must be used to describe the colors in the mark, e.g., magenta, yellow, turquoise.  TMEP §807.07(a)(i)-(ii).  If black, white, and/or gray are not being claimed as a color feature of the mark, applicant must exclude them from the color claim and include in the mark description a statement that the colors black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark.  See TMEP §807.07(d).

 

The following color claim and mark description are suggested, if accurate:

 

Color claim: 

 

“The colors grey, white red and yellow are claimed as a feature of the mark.”

 

Mark description: 

 

“The mark consists of the literal element “PDFLASH” with “PD” appearing in grey and “FLASH” appearing in yellow with back-shadowing of the letters.  Above the word “FLASH” appear two identical parallel lines which begin on the left with a smaller grey and white section which then becomes all red from the left to the end at the right.

 

See TMEP §807.07(b).

 

 

Color Differs on Drawing and Foreign Certificate

 

The drawing of the mark in the U.S. application is not acceptable because it does not correspond with the mark shown in the foreign registration; specifically, the colors in the two marks do not agree.  See 15 U.S.C. §1126(e); 37 C.F.R. §2.51(c); TMEP §§807.07(d)(ii), 1011.01.  The drawing in the U.S. application displays the mark in the colors grey, white, red and yellow; however, the foreign registration shows the mark in the colors black and white.

 

The drawing of the mark in a U.S. application must be a substantially exact representation of the mark that appears in the foreign registration.  37 C.F.R. §2.51(c); In re Hacot-Colombier, 105 F.3d 616, 618-19, 41 USPQ2d 1523, 1525 (Fed. Cir. 1997); TMEP §§807.12(b), 1011.01; see United Rum Merchs. Ltd. v. Distillers Corp. (S.A.), 9 USPQ2d 1481, 1483-84 (TTAB 1988).  However, a mark in a U.S. application may only be amended if the change would not materially alter the mark.  37 C.F.R. §2.72(c); In re Wine Soc’y of Am. Inc., 12 USPQ2d 1139, 1141 (TTAB 1989); see TMEP §§807.14 et seq., 1011.03.  In the present case, amending the mark in the U.S. application to agree with the foreign registration would not be considered a material alteration.

 

Therefore, applicant must satisfy the following:

 

(1) Submit a new color drawing that agrees with the colors shown in the foreign registration.

 

(2) Ensure that the color claim and mark description in the U.S. application agree with the colors shown in the foreign registration.  See 37 C.F.R. §§2.51(c), 2.52(b)(1); TMEP §§807.07(d)(ii), 1011.01.  The mark description must also accurately and concisely describe the literal and design elements of the mark and specify where all the colors appear in those elements.  See 37 C.F.R. §2.52(b)(1); TMEP §§807.07(a), 1011.01.  Generic color names must be used to describe the colors in the mark, e.g., magenta, yellow, turquoise.  TMEP §807.07(a)(i)-(ii).  If black, white, and/or gray are not being claimed as a color feature of the mark, applicant must exclude them from the color claim and include in the mark description a statement that the colors black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark.  See TMEP §807.07(d), (d)(ii).  The following color claim  andmark description are suggested, if accurate:

 

Color claim: 

 

“The colors grey, white red and yellow are claimed as a feature of the mark.”

 

Mark description: 

 

“The mark consists of the literal element “PDFLASH” with “PD” appearing in grey and “FLASH” appearing in yellow with back-shadowing of the letters.  Above the word “FLASH” appear two identical parallel lines which begin on the left with a smaller grey and white section which then becomes all red from the left to the end at the right.

 

Alternatively, applicant may amend the application basis from Trademark Act Section 44 to Section 1(a) or 1(b), if applicant can satisfy the requirements for the chosen basis.  See 15 U.S.C. §§1051(a)-(b), 1126(e); 37 C.F.R. §2.35(b)(1); TMEP §§806.03, 807.12(b).  A foreign registration certificate is not required for a Section 1(a) or 1(b) basis.  See 15 U.S.C. §1051(a)-(b); TMEP §806.01(a)-(b).

 

Signed Declaration Required

 

The undersigned being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements and the like may jeopardize the validity of the application or document or any registration resulting therefrom, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. §1051(b), §1126(d) or §1126(e), he/she believes the applicant to be entitled to use such mark in commerce; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; and that all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.

 

 

_____________________________

(Signature)

 

_____________________________

(Print or Type Name and Position)

 

_____________________________

(Date)

 

 

 

 

 

/Thomas M. Manor/

Trademark Examining Attorney

Law Office 110

Phone :  (571) 270-1519

Fax. No. (571) 273-9110

Thomas.Manor@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 2/26/2014 FOR U.S. APPLICATION SERIAL NO. 76715489

 

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 2/26/2014 (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.