Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

                                                                                            

 

 

 

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:

 

• Clarification of Configuration
• Color Claim and Mark Description Requirements
• Identification of Goods and Services Requirement
• Disclaimer Requirement

 

The following refusals are withdrawn:

 

• Trademark Act Sections 1, 2, and 45 Refusal – Failure to Function As a Trademark – Partial – Classes 14 and 26
• Trademark Act Sections 1, 2, and 45 Refusal – Ornamentation – Partial – Class 14 and 26

 

The examining attorney maintains and continues the following refusal and reinstates the following requirement:

 

• Trademark Act Sections 1, 2, and 45 Refusal – Failure to Function As a Service Mark – Partial – Class 45

·       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

 

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.

 

Registration refusal is maintained and continued because the applied-for mark, as its use is described in applicant’s responses to the information requests and the evidence of record, does not function as a service mark to identify and distinguish applicant’s services from those of others and to indicate the source of applicant’s services.  Trademark Act Sections 1, 2, 3 and 45, 15 U.S.C. §§1051-1053, 1127; see In re Moody’s Investors Serv., Inc., 13 USPQ2d 2043 (TTAB 1989); In re The Signal Cos., 228 USPQ 956 (TTAB 1986); In re Hughes Aircraft Co., 222 USPQ 263 (TTAB 1984); TMEP §§904.07(b), 1301.02 et seq.

 

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.

 

OPTION TO DIVIDE

 

The stated refusal refers to International Class 45 only and does not bar registration in the other classes.

 

Applicant may respond to the stated refusal by submitting evidence and arguments against the refusal.  In addition, applicant may respond by doing one of the following:

 

(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.

 

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 7/28/2016 FOR U.S. APPLICATION SERIAL NO. 79144333

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please 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 7/28/2016 (or sooner if specified in the Office action).  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System (TEAS) response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.