To: | The Crown in the Right of the Commonweal ETC. (IPDocket@foxrothschild.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 79144333 - AUSTRALIA - 135520.04023 |
Sent: | 7/28/2016 4:14:14 PM |
Sent As: | ECOM104@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 79144333
MARK: AUSTRALIA
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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: The Crown in the Right of the Commonweal ETC.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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INTERNATIONAL REGISTRATION NO. 1196355
This is a PROVISIONAL PARTIAL REFUSAL of the request for extension of protection of the mark in the above-referenced U.S. application that applies to only the following class in the application: Class 45. See 15 U.S.C. §1141h(c). See below in this notification (hereafter “Office action”) for details regarding the provisional partial refusal.
This Office acknowledges receipt of applicant’s communications dated February 27, 2015, and February 1, 2016. In the first communication, applicant clarified that the applied-for mark is a two-dimensional design mark, clarified that color is not claimed as a feature the mark, submitted black & white drawing, submitted a mark description, amended the identification of services, disclaimed the word AUSTRALIA, and responded to the information requests. In the second communication, applicant argued against the failure to function as a trademark refusal and the ornamentation refusal with respect to Classes 14 and 26, and applicant argued against the failure to function as a service mark refusal with respect to Class 45.
The following requirements have been satisfied:
The following refusals are withdrawn:
The examining attorney maintains and continues the following refusal and reinstates the following requirement:
· The examining attorney reinstates the information requirement as to the use of the mark with the questions below.
SUMMARY OF ISSUES:
Trademark Act Sections 1, 2, and 45 Refusal – Failure to Function As a Service Mark – Partial – Class 45 – MAINTAINED AND CONTINUED
This refusal only applies to Class 45.
Applicant’s identified services are “Military services being defence, intelligence, protection and surveillance services, namely, civil protection services, police protection services, analyzing defense, intelligence, protection and surveillance strategies, providing consultation and information concerning homeland safety and security, national security, counter-terrorism and public safety issues, providing consultation and information in the field of emergency response for communities, providing information in the field of the military, military tactics and strategies, providing intelligence and information to local, state, and federal law enforcement agencies relating to organized crime networks that operate across jurisdictional lines, security consultancy, surveillance services.”
The applied-for mark does not function as a service mark because, based on the identification of services and the evidence of record, it does not appear that such services will be performed in the United States. There is nothing in the record to suggest that the mark has been or will be used in connection with the identified services in the United States.
Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.
If applicant responds to the refusal, applicant must also respond to the requirement set forth below.
INFORMATION REQUIREMENT
This requirement only applies to Class 45.
Applicant was asked to provide information regarding the use of the mark. 37 C.F.R. §2.61(b) Applicant objected to the wording of this requirement as indicating there must be current use as opposed to future use. The requirement is now amended to require information regarding prospective use. To permit proper examination of the application, applicant must provide a written statement explaining the following:
1. How will the applicant
provide any of the identified services in the United States?
2. Applicant’s Exhibit C to applicant’s Response to Office Action advertised the Australian Army’s military operations in Cambodia, Somalia, Bougainville, East Timor/Timor-Leste, and Afghanistan and in United Nations operations.
a. Does the applicant have similar advertisements or other evidence concerning similar activities that will be offered by the applicant in the United States? If so, please submit examples.
3. Who will be the potential consumers for the applicant’s Class 45 services in the United States?
See 37 C.F.R. §2.61(b); In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004); TMEP §§814, 1402.01(e).
Failure to comply with a request for information is grounds for refusing registration. In re AOP LLC, 107 USPQ2d 1644, 1651 (TTAB 2013) (citing In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re DTI P’ship LLP, 67 USPQ2d 1699, 1701-02 (TTAB 2003); TMEP §814). Merely stating that information about the is available on applicant’s website is an insufficient response and will not make the relevant information of record. See In re Planalytics, Inc., 70 USPQ2d at 1457-58.
(1) Deleting the class to which the refusal pertains; or
(2) Filing a request to divide out the goods and/or services that have not been refused registration, so that the mark may proceed toward publication for opposition in the classes to which the refusal does not pertain. See 37 C.F.R. §2.87. See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide). If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to all outstanding issues in this Office action, including the refusal. 37 C.F.R. §2.87(e).
RESPONSE GUIDANCE
For this application to proceed further, applicant must explicitly address each refusal and/or requirement raised in this Office action. If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register. Applicant may also have other options specified in this Office action for responding to a refusal, and should consider those options carefully. To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements. For more information and general tips on responding to USPTO Office actions, response options, and how to file a response online, see “Responding to Office Actions” on the USPTO’s website.
FAILING TO RESPOND WILL RESULT IN PARTIAL ABANDONMENT OF APPLICATION: If applicant does not respond to this Office action within the six-month period for response, the following International Class will be deleted from the application: Class 45.
In such case, the application will then proceed only with the following International Classes: Classes 14 and 26. See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).
WHO IS PERMITTED TO RESPOND TO THIS PROVISIONAL PARTIAL REFUSAL: Any response to this provisional refusal must be personally signed by an individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner). 37 C.F.R. §§2.62(b), 2.193(e)(2)(ii); TMEP §712.01. If applicant hires a qualified U.S. attorney to respond on his or her behalf, then the attorney must sign the response. 37 C.F.R. §§2.193(e)(2)(i), 11.18(a); TMEP §§611.03(b), 712.01. Qualified U.S. attorneys include those in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and other U.S. commonwealths or U.S. territories. See 37 C.F.R. §§2.17(a), 2.62(b), 11.1, 11.14(a); TMEP §§602, 712.01. Additionally, for all responses, the proper signatory must personally sign the document or personally enter his or her electronic signature on the electronic filing. See 37 C.F.R. §2.193(a); TMEP §§611.01(b), 611.02. The name of the signatory must also be printed or typed immediately below or adjacent to the signature, or identified elsewhere in the filing. 37 C.F.R. §2.193(d); TMEP §611.01(b).
In general, foreign attorneys are not permitted to represent applicants before the USPTO (e.g., file written communications, authorize an amendment to an application, or submit legal arguments in response to a requirement or refusal). See 37 C.F.R. §11.14(c), (e); TMEP §§602.03-.03(b), 608.01.
/Donald Johnson/
Examining Attorney
Law Office 104
(571) 272-7831
don.johnson@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.