UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

FINAL 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: 10/18/2007

 

This is a Final Office Action.

 

Upon internal review of this application, the following is noted.  The refusal to register under Section 2(d) as to Registration No. 1824374 is withdrawn.  The remaining refusal(s)/requirement(s) outlined in the previous Final Office Action are maintained and continued under FINAL and copied in full below.

 

(1)      The refusal to register under Sections 1 and 44 as the name differs in the application and the foreign registration is continued and made FINAL.  The applicant stated: “Applicant submits that it is the owner of that foreign registration by change of name as well and hereby submits a copy of the Benelux Registration showing same.”  But, the applicant did NOT submit a copy of the Benelux Registration, so this refusal must be continued. 

 

(2)      The requirement for a copy of the foreign registration is continued and made FINAL.  No copy of the foreign registration was attached to the applicant’s response to the Office Action. 

 

Registration Refused – Name Differs in Application and Foreign Registration

Registration is refused because applicant is not the owner of the mark.  Trademark Act Sections 1 and 44, 15 U.S.C. §§1051 and 1126.  Under 15 U.S.C. §1126, an applicant must be the owner of the foreign registration on the filing date of the United States application.  37 C.F.R. §2.34(a)(3); TMEP §1005.  In re De Luxe, N.V., 990 F.2d 607, 26 USPQ2d 1475 (Fed. Cir. 1993); In re Tong Yang Cement Corp., 19 USPQ2d 1689 (TTAB 1991).  In this case, the foreign certificate specifies an owner other than the applicant, i.e., Koninklijke Emballage Industrie Van Leer N.V.

 

If applicant is the owner of the foreign registration and can prove ownership of the foreign registration by an assignment that was completed before filing in the United States, the §44 basis can remain in the application.  Applicant must submit a certified copy or certification from the foreign trademark office that reflects applicant’s ownership of the foreign registration and the date of the assignment, or evidence that the foreign registration was assigned to applicant before the filing date in the United States.  TMEP §§1005 and 1006.

 

If applicant did not own the foreign registration on or before the filing date, then applicant may substitute a different basis for filing if applicant can satisfy the requirements for the new basis.

 

In this case, applicant may wish to amend the application to assert a 1(b) basis.

 

Although the trademark examining attorney has refused registration, applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.

 

This refusal is continued and made FINAL.

 

Certificate of Foreign Registration Required

Neither the application nor the response includes a copy of the foreign registration.  An application filed under Section 44(e) of the Trademark Act must include a true copy, photocopy, certification or certified copy of a foreign registration, or a registered extension of protection of an international registration from the applicant’s country of origin.  15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004 et seq. 

 

The “search strategy” result does not appear to meet the requirement of “a registered extension of protection of an international registration from the applicant’s country of origin.”

 

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 must extend reciprocal registration rights to nationals of the United States by law.  See TMEP §§1002.01 and 1004.  If applicant’s country of origin does not issue registrations or certificates of extension of protection, the applicant may submit a copy of the international registration that shows that protection of the international registration has been extended to applicant’s country of origin.  TMEP §1016.

 

Therefore, applicant must submit a copy of the foreign registration in order to satisfy the requirement of Section 44(e).  If the foreign certificate of registration is not written in English, applicant must also provide an English translation signed by the translator.  See TMEP §§1004.01 and 1004.01(b).

 

This requirement is continued and made FINAL.

 

Options – Proper Response to Final Office Action

If applicant fails to respond to this final action within six months of the mailing date, the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond to this final action by: 

 

(1)   submitting a response that fully satisfies all outstanding requirements, if feasible (37 C.F.R. §2.64(a)); and/or

(2)   filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class (37 C.F.R. §§2.6(a)(18) and 2.64(a); TMEP §§715.01 and 1501 et seq.; TBMP Chapter 1200).

 

In certain circumstances, a petition to the Director may be filed to review a final action that is limited to procedural issues, pursuant to 37 C.F.R. §2.63(b)(2).  37 C.F.R. §2.64(a).  See 37 C.F.R. §2.146(b), TMEP §1704, and TBMP Chapter 1201.05 for an explanation of petitionable matter.  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

 

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

 

/Gina M. Fink/

Trademark Attorney - Law Office 109

Phone: (571) 272-9275

Law Office 109 Fax: (571) 273-9109

 

 

RESPOND TO THIS ACTION: If there are any questions about the Office action, please contact the assigned examining attorney. A response to this Office action should be filed using the form available at http://www.gov.uspto.report/teas/eTEASpageD.htm. If notification of this Office action was received via e-mail, no response using this form may be filed for 72 hours after receipt of the notification. Do not attempt to respond by e-mail as 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

USPTO OFFICE ACTION HAS ISSUED ON 10/18/2007 FOR

APPLICATION SERIAL NO. 77010945

 

Please follow the instructions below to continue the prosecution of your application:

  

VIEW OFFICE ACTION: Click on this link http://portal.gov.uspto.report/external/portal/tow?DDA=Y&serial_number=77010945&doc_type=OOA&mail_date=20071018 (or copy and paste this URL into the address field of your browser), or visit http://portal.gov.uspto.report/external/portal/tow and enter the application serial number to access the Office action.

 

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

 

RESPONSE MAY BE REQUIRED: You should carefully review the Office action to determine (1) if a response is required; (2) how to respond; and (3) the applicable response time period. Your response deadline will be calculated from 10/18/2007.

 

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.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System response form at http://www.gov.uspto.report/teas/eTEASpageD.htm.

 

HELP: For technical assistance in accessing the Office action, please e-mail

TDR@uspto.gov.  Please contact the assigned examining attorney with questions about the Office action. 

 

        WARNING

1. The USPTO will NOT send a separate e-mail with the Office action attached.

 

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