UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
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U.S. APPLICATION SERIAL NO. 79183791
MARK: VOLCANIC
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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: SUPERFOOD HOLDINGS LIMITED
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
INTERNATIONAL REGISTRATION NO. 1290469
STRICT DEADLINE TO RESPOND TO THIS NOTIFICATION: TO AVOID ABANDONMENT OF THE REQUEST FOR EXTENSION OF PROTECTION OF THE INTERNATIONAL REGISTRATION, THE USPTO MUST RECEIVE A COMPLETE RESPONSE TO THIS PROVISIONAL FULL REFUSAL NOTIFICATION WITHIN 6 MONTHS OF THE “DATE ON WHICH THE NOTIFICATION WAS SENT TO WIPO (MAILING DATE)” LOCATED ON THE WIPO COVER LETTER ACCOMPANYING THIS NOTIFICATION.
In addition to the Mailing Date appearing on the WIPO cover letter, a holder (hereafter “applicant”) may confirm this Mailing Date using the USPTO’s Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. To do so, enter the U.S. application serial number for this application and then select “Documents.” The Mailing Date used to calculate the response deadline for this provisional full refusal is the “Create/Mail Date” of the “IB-1rst Refusal Note.”
This is a PROVISIONAL FULL REFUSAL of the request for extension of protection of the mark in the above-referenced U.S. application. See 15 U.S.C. §1141h(c). See below in this notification (hereafter “Office action”) for details regarding the provisional full refusal.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION – CLASS 30
Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 4793960, 4793966, and 3201520. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the enclosed registrations.
In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods, and similarity of the trade channels of the goods. See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.
Here, applicant’s mark is VOLCANIC in connection with “Snack foods containing wheat, corn, rice, cereals, sesame, grain and/or multigrain; nutritional bars containing wheat, corn, rice, cereals, sesame, grain and/or multigrain; cereal-based snack foods; cereal-based food bars; snack bars containing grains, nuts and dried fruits; muesli bars; high protein cereal bars; cereal seeds (processed); natural sweeteners; natural sweeteners consisting of fruit concentrates; agave syrup; honey; maple syrup; syrup for sweetening; convenience food and snacks, namely, cereal snacks, rice snacks, sesame snacks, fruit cake snacks, processed cereals; biscuits and crackers, rice and cereal dishes, bread, pastries, cakes, tarts and biscuits (cookies), sweets (candy), candy bars, energy bars; vinegar; salt; seasonings, flavourings and condiments; baked goods, confectionery, chocolate and desserts, including chocolate covered nuts, fruit jellies and pralines; sugars, natural sweeteners, sweet coatings and fillings, bee products; ice, ice creams, frozen yogurts and sorbets; coffee, teas and cocoa and substitutes therefor; processed grains, starches, and goods made thereof, baking preparations and yeasts,” among other goods.
The cited registrations appear in the chart below.
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Mark |
Goods |
U.S. Reg. No. |
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VOLCANIC PEPPERS |
Condiments, namely, hot sauces, spice blends, ketchup, mustard, grilling sauces, dipping sauces, and cooking sauces |
4793960 |
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VOLCANIC PEPPERS and design |
Condiments, namely, hot sauces, spice blends, ketchup, mustard, grilling sauces, dipping sauces, and cooking sauces |
4793966 |
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VOLCANIC ROAST |
Coffee |
3201520 |
Comparison of the Marks
Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F. 3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)); In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988)); TMEP §1207.01(b).
Here, applicant’s mark is fully contained within each of the cited registrations. Moreover, the additional wording in each registration has been disclaimed by the registrants. Disclaimed matter that is descriptive of or generic for a party’s goods is typically less significant or less dominant when comparing marks. See In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Nat’l Data Corp., 753 F.2d at 1060, 224 USPQ at 752; TMEP §1207.01(b)(viii), (c)(ii). Finally, with regard to the minor design element in the ‘966, the word portions of the marks are nearly identical in appearance, sound, connotation, and commercial impression; therefore, the addition of a design element does not obviate the similarity of the marks in this case. See In re Shell Oil Co., 992 F.2d 1204, 1206, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993); TMEP §1207.01(c)(ii).
Accordingly, applicant’s mark is similar to the marks in the cited registrations.
Relatedness of the Goods
The respective goods need only be “related in some manner and/or if the circumstances surrounding their marketing [be] such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).
In this case, the identification set forth in the application and registrations has no restrictions as to nature, type, channels of trade, or classes of purchasers. Therefore, it is presumed that these goods and/or services “travel in the same channels of trade to the same class of purchasers.” In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). Further, the application uses broad wording to describe the goods and this wording is presumed to encompass all goods of the type described, including those in the more narrow identifications in the cited registrations. See In re Jump Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB 2006) (citing In re Elbaum, 211 USPQ 639, 640 (TTAB 1981)). Specifically, applicant’s “seasonings, flavourings and condiments,” is broader than and would include the goods in the ‘960 and ‘966 registrations. Further, applicant’s “coffee, teas and cocoa and substitutes therefor” is broader than and would include the “coffee” in the ‘520 registration.
Thus, upon encountering applicant’s and registrant’s marks, consumers are likely to be confused and mistakenly believe that the respective goods emanate from a common source. Accordingly, applicant’s mark must be refused registration under Section 2(d) of the Lanham Act.
Response Options
(1) Deleting the class to which the refusal pertains;
(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).
Applicant should note the following additional ground for refusal.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION – CLASS 32
The stated refusal refers to International Class 32 only and does not bar registration in the other classes.
In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods and similarity of the trade channels of the goods. See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.
Here, applicant’s mark is VOLCANIC in connection with “Beverages having a nectar base; fruit nectars; fruit syrups; syrups for beverages; non-alcoholic beverages; fruit beverages and fruit juices; syrups and other preparations for making beverages,” among other goods.
The cited registrations appear in the chart below.
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Mark |
Goods |
U.S. Reg. No. |
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VOLCANIC |
Spirits |
4481338 |
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HAWAI'I VOLCANIC and design |
Aerated mineral waters; Aerated water; Aerated water; Bottled artesian water; Carbonated waters; Coconut water; Coffee-flavored soft drink; Drinking water with vitamins; Energy drinks; Flavored bottled water; Flavored waters; Fruit drinks; Fruit drinks and fruit juices; Fruit drinks and juices; Fruit flavored drinks; Fruit flavored soft drinks; Fruit-based soft drinks flavored with tea; Guarana drinks; Isotonic beverages; Isotonic drinks; Isotonic non-alcoholic drinks; Magnetically treated water for human consumption and not for medical purposes; Mineral and aerated water; Mineral and aerated waters; Mineral and carbonated waters; Non-alcoholic beverages with tea flavor; Powders used in the preparation of isotonic sports drinks and sports beverages; Purified bottled drinking water; Quinine water; Scented water for making beverages; Seltzer water; Soda water; Soft drinks; Soft drinks flavored with tea; Soft drinks, namely, caffeinated and non-caffeinated soft drinks; Sparkling water; Sports drinks containing electrolytes; Spring water; Still water; Table water |
4361043 |
Comparison of the Marks
Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F. 3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)); In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988)); TMEP §1207.01(b).
With regard to the ‘338 registration, in a likelihood of confusion determination, the marks in their entireties are compared for similarities in appearance, sound, connotation, and commercial impression. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b)-(b)(v).
In the present case, applicant’s mark is VOLCANIC and registrant’s mark is VOLCANIC. Thus, the marks are identical in terms of appearance and sound. In addition, the connotation and commercial impression of the marks do not differ when considered in connection with applicant’s and registrant’s respective goods.
With regard to the ‘043 registration, applicant’s mark is fully contained within the cited registration. Moreover, the additional wording in the registration has been disclaimed by the registrant. Disclaimed matter that is descriptive of or generic for a party’s goods is typically less significant or less dominant when comparing marks. See In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Nat’l Data Corp., 753 F.2d at 1060, 224 USPQ at 752; TMEP §1207.01(b)(viii), (c)(ii). Finally, with regard to the minor design element in the registration, the word portions of the marks are nearly identical in appearance, sound, connotation, and commercial impression; therefore, the addition of a design element does not obviate the similarity of the marks in this case. See In re Shell Oil Co., 992 F.2d 1204, 1206, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993); TMEP §1207.01(c)(ii).
Therefore, the marks are confusingly similar.
Relatedness of the Goods
The respective goods need only be “related in some manner and/or if the circumstances surrounding their marketing [be] such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).
In this case with regard to the ‘043 registration, the identification set forth in the application and registration has no restrictions as to nature, type, channels of trade, or classes of purchasers. Therefore, it is presumed that these goods “travel in the same channels of trade to the same class of purchasers.” In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). Further, the application uses broad wording to describe the goods and this wording is presumed to encompass all goods of the type described, including those in registrant’s more narrow identification. See In re Jump Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB 2006) (citing In re Elbaum, 211 USPQ 639, 640 (TTAB 1981)).
Evidence obtained from the Internet may be used to support a determination under Section 2(d) that goods and/or services are related. See, e.g., In re G.B.I. Tile & Stone, Inc., 92 USPQ2d 1366, 1371 (TTAB 2009); In re Paper Doll Promotions, Inc., 84 USPQ2d 1660, 1668 (TTAB 2007).
Thus, upon encountering applicant’s and registrant’s marks, consumers are likely to be confused and mistakenly believe that the respective goods emanate from a common source. Accordingly, applicant’s mark must be refused registration under Section 2(d) of the Lanham Act.
Response Options
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;
(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).
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
In general, commas should be used in an identification (1) to separate a series of related items identified within a particular category of goods or services, (2) before and after “namely,” and (3) between each item in a list of goods or services following “namely.” TMEP §1402.01(a). Semicolons generally should be used to separate a series of distinct categories of goods or services within an international class. Id. However, colons and periods should not be used in an identification of goods and/or services. Id.
Therefore, applicant must remove the parentheses from the identification and incorporate any parenthetical or bracketed information into the description of the goods.
Therefore, applicant should replace “and/or” with “and” in the identification of goods or services, if appropriate, or rewrite the identification with the “and/or” deleted and the goods or services specified using definite and unambiguous language.
In addition, in International Class 29, the wording “Snack foods containing dried fruits, soya, beans, edible nuts, vegetables and/or edible seeds,” “nutritional bars containing fruits, soya, beans, edible nuts, vegetables and/or sprouted seeds; edible nuts,” “edible nuts,” “oils and fats, including butter,” “processed fruits, fungi and vegetables, including processed nuts and pulses,” “prepared soya,” and “snacks and desserts, namely, potato-based snacks, fruit-based snacks, candied fruit-based snacks, tofu-based snacks, fruit desserts, desserts made from milk products” in the identification of goods must be clarified because each is too broad and could include goods in other international classes. See TMEP §§1402.01, 1402.03.
In International Class 30, the wording “Snack foods containing wheat, corn, rice, cereals, sesame, grain and/or multigrain,” nutritional bars containing wheat, corn, rice, cereals, sesame, grain and/or multigrain; cereal-based snack foods,” “snack bars containing grains, nuts and dried fruits,” “syrup for sweetening,” “convenience food and snacks, namely, cereal snacks, rice snacks, sesame snacks, fruit cake snacks, processed cereals,” “seasonings, flavourings and condiments,” “rice and cereal dishes,” “sugars, natural sweeteners, sweet coatings and fillings, bee products” and “processed grains, starches, and goods made thereof, baking preparations and yeasts” in the identification of goods must be clarified because each is too broad and could include goods in other international classes. See TMEP §§1402.01, 1402.03.
In International Class 32, the wording “beverages having a nectar base,” “non-alcoholic beverages,” “fruit syrups,” and “syrups and other preparations for making beverages” in the identification of goods must be clarified because each is too broad and could include goods in other international classes. See TMEP §§1402.01, 1402.03.
Applicant may adopt the following identification, if accurate (changes in bold):
Class 29: Snack foods containing dried fruits, soya, beans, edible nuts, vegetables and edible seeds in the nature of fruit, nut and seed based snack foods ; nutritional bars containing fruits, soya, beans, edible nuts, vegetables and sprouted seeds in the nature of fruit, nut and seed based food bars; edible nuts, namely, {indicate a type of nuts properly classified in International Class 29 e.g., roasted nuts}; processed coconuts; processed mangos; textured vegetable protein for use as a meat substitute; dips; edible oils and fats, and butter; processed fruits, fungi in the nature of mushrooms and vegetables, and processed nuts and pulses; prepared soya, namely, {indicate specific prepared soya good(s) e.g., soya milk}; snacks and desserts, namely, potato-based snacks, fruit-based snacks, candied fruit-based snacks, tofu-based snacks, fruit desserts in the nature of {indicate specific food item properly classified in International Class 29 e.g., strawberry milk}, desserts made from milk products desserts in the nature of {indicate specific food item properly classified in International Class 29 e.g., chocolate milk}
Class 30: Snack foods containing wheat, corn, rice, cereals, sesame, grain and multigrain in the nature of wheat-based, corn-based, rice-based, cereal-based, sesame-based, grain-based, and multigrain-based snack foods; nutritional bars containing wheat, corn, rice, cereals, sesame, grain and multigrain in the nature of wheat-based, corn-based, rice-based, cereal-based, sesame-based, grain-based, and multigrain-based food bars; cereal-based snack foods; cereal-based food bars; snack bars in the nature of {indicate a food properly classified in International Class 30 e.g., granola bars} containing grains, nuts and dried fruits; muesli bars; high protein cereal bars; cereal seeds being processed cereals; natural sweeteners; natural sweeteners consisting of fruit concentrates; agave syrup; honey; maple syrup; {indicate the type of syrup e.g., agave} syrup for sweetening; convenience food and snacks, namely, cereal-based snack foods, rice-based snack foods, sesame snacks in the nature of sesame sticks, fruit cake snacks, processed cereals; biscuits and crackers; rice and cereal dishes, namely, {indicate specific rice and cereal dishes e.g., puffed rice}; bread; pastries; cakes; tarts and biscuits being cookies; sweets being candy; candy bars; {indicate a type of energy bar properly classified in International Class 30 e.g., cereal-based} energy bars; vinegar; salt; seasonings, flavourings and condiments, namely, {indicate specific goods e.g., seasonings, mustard}; baked goods, confectionery, chocolate and desserts, namely, chocolate covered nuts, fruit jellies in the nature of {indicate a specific good properly classified in International Class 30 e.g., fruit jelly candy} and pralines; sugars, natural sweeteners, sweet coatings and fillings in the nature of {indicate specific good(s) e.g., fondants}, bee products in the nature of {indicate specific good(s) e.g., honey}; ice, ice creams, frozen yogurts and sorbets; coffee, teas and cocoa and substitutes therefor; processed grains, {indicate the type of starch e.g., food} starches, and goods made thereof in the nature of baking preparations being {indicate specific backing preparations e.g., baking spices} and yeasts
Class 32: {indicate the type of beverage e.g., fruit} beverages having a nectar base; fruit nectars; fruit syrups for making beverages; syrups for beverages; non-alcoholic beverages, namely, {indicate a specific beverage(s) e.g., distilled drinking water}; fruit beverages and fruit juices; syrups and other preparations in the nature of {indicate a specific type of preparation e.g., lime juice} for making beverages
An applicant may only amend an identification to clarify or limit the goods and/or services, but not to add to or broaden the scope of the goods and/or services. 37 C.F.R. §2.71(a); see TMEP §1904.02(c)(iv). In an application filed under Trademark Act Section 66(a), the scope of the identification for purposes of permissible amendments is limited by the international class assigned by the International Bureau of the World Intellectual Property Organization (International Bureau). 37 C.F.R. §2.85(f); TMEP §§1402.07(a), 1904.02(c). If an applicant amends an identification to a class other than that assigned by the International Bureau, the amendment will not be accepted because it will exceed the scope and those goods and/or services will no longer have a basis for registration under U.S. law. TMEP §§1402.01(c), 1904.02(c).
In addition, in a Section 66(a) application, an applicant may not change the classification of goods and/or services from that assigned by the International Bureau in the corresponding international registration. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1402.01(c). Further, in a multiple-class Section 66(a) application, an applicant may not transfer goods and/or services from one existing international class to another. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1402.01(c).
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.
INFORMATION ABOUT GOODS REQUIRED
Factual information about the goods must make clear how they operate, salient features, and prospective customers and channels of trade. For the services, the factual information must make clear what the services are and how they are rendered, salient features, and prospective customers and channels of trade. Conclusory statements will not satisfy this requirement for information.
Failure to comply with a request for information can be grounds for refusing registration. In re AOP LLC, 107 USPQ2d at 1651; In re DTI P’ship LLP, 67 USPQ2d 1699, 1701-02 (TTAB 2003); TMEP §814. Merely stating that information about the goods or services is available on applicant’s website is an inappropriate response to a request for additional information and is insufficient to make the relevant information of record. See In re Planalytics, Inc., 70 USPQ2d at 1457-58.
For this application to proceed toward registration, 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 for responding to a refusal and should consider such options carefully. To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements.
If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end, the trademark will fail to register, and the application fee will not be refunded. See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a), 2.209(a); TMEP §§405.04, 718.01, 718.02. Where the application has been abandoned for failure to respond to an Office action, applicant’s only option would be to file a timely petition to revive the application, which, if granted, would allow the application to return to active status. See 37 C.F.R. §2.66; TMEP §1714. There is a $100 fee for such petitions. See 37 C.F.R. §§2.6, 2.66(b)(1).
Because of the legal technicalities and strict deadlines involved in the USPTO application process, applicant may wish to hire a private attorney specializing in trademark matters to represent applicant in this process and provide legal advice. Although the undersigned trademark examining attorney is permitted to help an applicant understand the contents of an Office action as well as the application process in general, no USPTO attorney or staff is permitted to give an applicant legal advice or statements about an applicant’s legal rights. TMEP §§705.02, 709.06.
For attorney referral information, applicant may consult the American Bar Association’s Consumers’ Guide to Legal Help at http://www.abanet.org/legalservices/findlegalhelp/home.cfm, an attorney referral service of a state or local bar association, or a local telephone directory. The USPTO may not assist an applicant in the selection of a private attorney. 37 C.F.R. §2.11.
ASSISTANCE
WHO IS PERMITTED TO RESPOND TO THIS PROVISIONAL FULL 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.
DESIGNATION OF DOMESTIC REPRESENTATIVE: The USPTO encourages applicants who do not reside in the United States to designate a domestic representative upon whom any notice or process may be served. TMEP §610; see 15 U.S.C. §§1051(e), 1141h(d); 37 C.F.R. §2.24(a)(1)-(2). Such designations may be filed online at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp
/Michael Eisnach/
Examining Attorney
Law Office 104
(571) 272-2592
Michael.Eisnach@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.