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: 2/10/2012

 

The statement of use 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.

 

DOESS NOT FUNCTION AS A TRADEMARK

 

Registration is refused because the applied-for mark, as used on the specimen of record, identifies only the name and image of a particular character in a creative work; it does not function as a trademark to identify and distinguish applicant’s goods from those of others and to indicate the source of applicant’s goods.  Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051-1052, 1127; see In re Caserta, 46 USPQ2d 1088 (TTAB 1998); TMEP §§904.07(b), 1202.10. 

 

The name of a character is registrable as a trademark only where the record shows that it is used in a manner that would be perceived by consumers as identifying the goods in addition to identifying the character.  In re Caserta, 46 USPQ2d at 1090; see TMEP §1202.10.  In this case, the specimen shows the applied-for mark used only as the name of a character and not as a trademark for applicant’s goods because the mark is shown as one of several characters on the cover of the packaging of applicant’s bags for collecting waste.

 

Amended Drawing Page :

Applicant has requested that the drawing of the mark be amended.  The original drawing shows the mark as dog design above the wording ‘BAILEY’; the amended drawing shows the mark as dog design with the name of the dog removed. 

 

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; In re Who? Vision Sys., Inc., 57 USPQ2d 1211 (TTAB 2000) (holding proposed amendment of TACILESENSE to TACTILESENSE to be material alteration); In re CTB Inc., 52 USPQ2d 1471 (TTAB 1999) (holding proposed amendment of TURBO and design to typed word TURBO to be material alteration); 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 Who? Vision Sys. Inc., 57 USPQ2d at 1218.  “The modified mark must contain what is the essence of the original mark, and the new form must 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.

 

The Office determines whether a proposed amendment materially alters a mark by comparing the proposed amended mark with the mark in the drawing filed with the original application.  TMEP §807.14(d). 

 

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.  Specifically, the proposed amendment would materially alter the mark in the initial application because the deletion of the name ‘BAILEY’ is a material alteration.

 

Accordingly, the proposed amendment will not be entered and thus, the previously acceptable drawing of the mark will remain operative.  TMEP §807.17.  Applicant must respond 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 to Office action form, applicant may request withdrawal of 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 indicating applicant’s request to withdraw the amended drawing, for example: “Applicant requests withdrawal of the proposed amended drawing submitted on January 20, 2012.” 

 

 

 

 

 

 

 

 

 

 

/Won T. Oh/

Law Office 114

email: won.oh@uspto.gov

(571) 272-9204

Fax: (571) 273 – 9114

 

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 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 Trademark Applications and Registrations Retrieval (TARR) at http://tarr.gov.uspto.report/.  Please keep a copy of the complete TARR screen.  If TARR shows no change for more than six months, 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/teas/eTEASpageE.htm.

 

 

 

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION HAS ISSUED ON 2/10/2012 FOR

SERIAL NO. 77607607

 

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

 

 

TO READ OFFICE ACTION: Click on this link or go to 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 e-mail notification.

 

RESPONSE IS REQUIRED: You should 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 2/10/2012 (or sooner if specified in the office action).

 

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.

 

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

 

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