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. 

 

MAILING/E-MAILING DATE INFORMATION:  If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.

 

Serial Number  77/007617

 

The assigned examining attorney has reviewed the referenced application and determined the following.

 

Search Results

 

The Office records have been searched 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.  However, the applicant must respond to the following informalities.

 

Entity Designation

 

The application identifies the applicant as a company. This is not an acceptable entity designation because the U.S. equivalent is unclear.  TMEP §803.03.

 

Therefore, applicant must specify the type of entity applying, e.g., corporation, unincorporated association, partnership or joint venture.  In addition, applicant must specify the U.S. state or foreign country under which it is organized.  37 C.F.R. §2.32(a)(3); TMEP §§803.03 et seq.

 

Color Claim and Color Location Statement

 

The color claim and color location statement do not identify all the colors appearing in the drawing of the mark. Specifically, the color white has been omitted.  The color claim and location statement must identify all the colors in the mark on the drawing.  37 C.F.R. §2.52(b)(1); TMEP §§807.07 et seq. 

 

Therefore, applicant must submit a complete color claim and color description of the mark that reference all the colors appearing in the drawing of the mark.  37 C.F.R. §2.52(b)(1); TMEP §807.07(a)(ii). 

 

The following color claim and color location statement are suggested:

 

Color Claim: The colors blue and white are claimed as a feature of the mark. 

 

Color Location Statement: The large circle appears in blue, and the wording PERSONIX and the small circle appear in white.

 

Significance of Mark

 

Applicant must specify whether “PERSONIX” has any significance in the relevant trade or industry, any geographical significance, or any meaning in a foreign language.  37 C.F.R. §2.61(b).

 

Certificate Required

 

If applicant is asserting §44(e) as a basis for registration (based on the foreign registration that will issue from the application that the applicant relied on for priority), then applicant must submit a true copy, photocopy, certification or certified copy of a foreign registration from the 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 must extend reciprocal registration rights to nationals of the United States by law.  See TMEP §§1002.01, 1003.03 and 1004.

 

If 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).

 

Option to Delete Basis

 

The application specifies both intent to use under Section 1(b) and a claim of priority under Section 44(d) based on a foreign application.  15 U.S.C. §§1051(b) and 1126(d).  When an application is filed pursuant to Section 44(d), the USPTO presumes, unless otherwise indicated, that applicant intends to rely upon the resulting foreign registration as a basis for registration in the U.S.  TMEP §§806.02(f) and 1003.03. 

 

However, applicant may rely solely on intent to use as the basis for registration, and still claim the benefit of the priority filing date.  If applicant wants to rely on intent to use as the sole basis for registration, with the claim of priority, applicant should submit an amendment so advising the undersigned.  Once all other outstanding issues are resolved, the mark would be approved for publication without requiring a copy of the foreign registration.  TMEP §§806.02(f) and 806.04(b).  However, while the mark may be approved for publication, it will not register until an acceptable allegation of use has been filed.

 

If applicant does not indicate otherwise, the USPTO will presume that applicant is relying on the foreign registration as an additional basis for registration.  Thus, the application will not be approved for publication until a copy of the foreign registration and, if appropriate, an English translation signed by the translator, have been filed.  TMEP §§1004.01 and 1004.01(b).

 

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

 

 

 

 

 

/Amy Alfieri/

Trademark Attorney, USPTO

Law Office 109

phone: 571.272.9422

fax: 571.273.9109

 

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond using the Office’s Trademark Electronic Application System (TEAS) Response to Office action form available on our website at http://www.gov.uspto.report/teas/index.html.  If the Office action issued via e-mail, you must wait 72 hours after receipt of the Office action to respond via TEAS.  NOTE:  Do not respond by e-mail.  THE USPTO WILL NOT ACCEPT AN E-MAILED RESPONSE.
• 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.  NOTE:  The filing date of the response will be the date of receipt in the Office, not the postmarked date.  To ensure your response is timely, use a certificate of mailing.  37 C.F.R. §2.197.

 

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.