To: | SOUTHCORP BRANDS PTY LIMITED (tm@sughrue.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 76718393 - HERRINGBONE - N/A |
Sent: | 9/8/2015 4:11:26 PM |
Sent As: | ECOM114@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 76718393
MARK: HERRINGBONE
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: SOUTHCORP BRANDS PTY LIMITED
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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: 9/8/2015
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 Clause
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).
Summary of Issues that Applicant Must Address
- Filing Basis Required
An application may be filed based on any of the following:
(1) Use of the mark in commerce under Trademark Act Section 1(a);
(2) A bona fide intention to use the mark in commerce under Section 1(b);
(3) A claim of priority under Section 44(d) that is based on an earlier-filed foreign application, and that has been filed within six months of the filing date of the foreign application; and/or
(4) A foreign registration of a mark in applicant’s country of origin under Section 44(e).
15 U.S.C. §§1051(a)-(b), 1126(d)-(e); 37 C.F.R. §2.34(a)(1)-(a)(4); TMEP §806.01(a)-(d).
Therefore, applicant must (1) amend the application to specify at least one filing basis, and (2) satisfy all the requirements for the basis or bases asserted. TMEP §806.
Depending on the circumstances, applicant may be entitled to assert more than one of the above bases. When claiming more than one basis, applicant must (1) satisfy all requirements for each basis claimed; (2) state that more than one basis is being asserted; and (3) list separately each basis, followed by the goods or services to which that basis applies. 37 C.F.R. §2.34(b); TMEP §806.02(a).
Although multi-basis applications are permitted, applicant cannot assert both use in commerce and intent to use for the same goods or services. 37 C.F.R. §2.34(b); TMEP §806.02(b).
Requirements for an Application Based on Section 1(a): Use in Commerce
An application based on use of the mark in commerce must include the following:
(1) The following statement: “The mark is in use in commerce and was in use in commerce as of the application filing date;”
(2) The date of applicant’s first use of the mark anywhere on the goods or in connection with the services;
(3) The date of applicant’s first use of the mark in commerce;
(4) One “specimen” showing how applicant uses the mark in commerce. If a specimen was not submitted with the initial application, applicant must submit the following statement: “The specimen was in use in commerce at least as early as the application filing date;” and
(5) Verification, in an affidavit or signed declaration under 37 C.F.R. §2.20, of the above statements and dates of use.
See 15 U.S.C. §1051(a); 37 C.F.R. §§2.34(a)(1), 2.59(a); TMEP §806.01(a).
Requirements for an Application Based on Section 1(b): Intent-to-Use
Applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date.
15 U.S.C. §1051(b)(3)(B); 37 C.F.R. §2.34(a)(2); TMEP §806.01(b); see 37 C.F.R. §2.193(e)(1).
Requirements for an Application Based on Section 44(d): Foreign Application for the Same Mark
(1) A timely “claim of priority,” that is, a claim of priority that has been filed within six months of the filing date of the foreign application;
(2) (a) The filing date and foreign country of the first regularly filed foreign application or (b) a statement that the U.S. application is based upon a subsequent regularly filed application in the same foreign country, and that any prior-filed application has been withdrawn, abandoned or otherwise disposed of, without having been laid open to public inspection and without having any rights outstanding, and has not served as a basis for claiming a right of priority;
(3) The serial number of the foreign application upon which the priority claim is based; and
(4) The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “Applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date.”
15 U.S.C. §1126(d); 37 C.F.R. §2.34(a)(4); TMEP §806.01(c); Paris Convention for the Protection of Industrial Property art. 4, Mar. 20, 1883, http://www.wipo.int/treaties/en/ip/paris/trtdocs_wo020.html.
Requirements for an Application Based on Section 44(e): Foreign Registration for the Same Mark
An application based on a foreign registration must include the following:
(1) A true copy, a photocopy, a certification, or a certified copy of a registration of the mark in applicant’s country of origin. A copy of a foreign registration must be a document issued to an applicant by or certified by the intellectual property office in the applicant’s country of origin. TMEP §1004.01. Applicant’s country of origin must 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. TMEP §1002.01.
(2) An English translation of the foreign registration 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, verified in an affidavit or signed declaration under 37 C.F.R. §2.20: “Applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date.”
See 15 U.S.C. §1126(b), (e); 37 C.F.R. §2.34(a)(3); TMEP §806.01(d).
Assistance
/AKhan/
Asmat Khan
Law Office 114
(571)-272-9453
asmat.khan@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.