Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

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

 

 

 

OFFICE ACTION

 

 

 

INTERNATIONAL REGISTRATION NO. 0881759

 

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.

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issues below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

SUMMARY OF ISSUES:

• Refusal – Section 2(d) Likelihood of Confusion
• Refusal – Prior Filed Conflicting Applications
• Requirement – Description of Mark
• Requirement – Amendment of Identification of Goods and Services and
• Requirement – Entity Type and Place of Incorporation

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration Nos. 3763774, 3763773, 2166623, 2107804, 2277160, 2105875, 2107803, 2118358, 2038670, 2038669, 2035445, 2035444, 2105874, 2438687, 2141315, 2086330, and 3009835. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

The Applicant’s mark is “MILLENNIUM” for “Coffee, tea; Services for providing food and drink”

 

The Registrant’s marks are

 

“GRAND MILLENNIUM” U.S. Reg. No. 3763774 for “Business management of hotels and motels and other temporary accommodation including serviced apartments and apartment hotels; public relations services in relation to temporary accommodation, including hotels and motels, serviced apartments and apartment hotels; marketing of temporary accommodation including hotels and motels, serviced apartments and apartment hotels including the advertising of the aforementioned services via the Internet and other global computer networks; Temporary accommodation services, rental of temporary accommodation, catering of food and drink; rental of meeting rooms, restaurants, and cafés for social meetings; reservations of temporary accommodation; providing temporary housing accommodation; hotel services”

 

“GRAND MILLENNIUM” U.S. Reg. No. 3763773 for “Business management of hotels and motels and other temporary accommodation including serviced apartments and apartment hotels; public relations services in relation to temporary accommodation, including hotels and motels, serviced apartments and apartment hotels; marketing of temporary accommodation including hotels and motels, serviced apartments and apartment hotels including the advertising of the aforementioned services via the Internet and other global computer networks; Temporary accommodation services, rental of temporary accommodation, catering of food and drink; rental of meeting rooms, restaurants, and cafés for social meetings; reservations of temporary accommodation; providing temporary housing accommodation; hotel services”

 

“MILLENNIUM” U.S. Reg. No. 2166623 for “providing convention facilities, providing facilities for exhibitions, making hotel accommodations and reservations for others, providing banquet and social function facilities for special occasions, bar and cocktail lounge services, cafe services, restaurant services and catering services”

 

“MILLENNIUM CONFERENCE CENTRE” U.S. Reg. No. 2107804 for “business services, namely, consultation in the areas of business, catering and hotel management of others; business advisory and consultation services relating to hotel services franchising; providing facilities for business meetings; hotel concierge services; hotel services for preferred customers, making hotel reservations for others, providing facilities for conventions, food preparation, contract food services and catering”

 

“MILLENNIUM HOTELS AND RESORTS” U.S. Reg. No. 2277160 for “hotel services, namely, hotel accommodation services, and reservation services for hotel accommodations; providing banquet and social function facilities for special occasions, providing convention and conference facilities, and catering services; bar, cafe', restaurant services; cocktail lounge and coffee shop services; and food preparation”

 

“MILLENNIUM” U.S. Reg. No. 2105875 for “business services, namely, consultation in the areas of business, catering and hotel management of others; business advisory and consultation services relating to hotel services franchising; providing facilities for business meetings”

 

“MILLENNIUM CONFERENCE CENTRE” U.S. Reg. No. 2107803 for “business services, namely, consultation in the areas of business, catering and hotel management of others; business advisory and consultation services relating to hotel services franchising; providing facilities for business meetings; hotel concierge services; hotel services for preferred customers, making hotel reservations for others, providing facilities for conventions, food preparation, contract food services and catering”

 

“MILLENNIUM” U.S. Reg. No. 2118358 for “business services, namely, consultation in the areas of business, catering and hotel management of others; business advisory and consultation services relating to hotel services franchising; providing facilities for business meetings”

 

“MILLENNIUM BROADWAY” U.S. Reg. No. 2038670 for “hotel concierge services; hotel services for preferred customers, making hotel reservations for others, providing facilities for conventions, food preparation, contract food services and catering”

 

“MILLENNIUM BROADWAY” U.S. Reg. No. 2038669 for “hotel concierge services; hotel services for preferred customers, making hotel reservations for others, providing facilities for conventions, food preparation, contract food services and catering”

 

“MILLENIUM” U.S. Reg. No. 2035445 for “hotel concierge services; hotel services for preferred customers, making hotel reservations for others, providing facilities for conventions, food preparation, contract food services and catering”

 

“MILLENNIUM” U.S. Reg. No. 2035444 for “hotel concierge services; hotel services for preferred customers, making hotel reservations for others, providing facilities for conventions, food preparation, contract food services and catering”

 

“MILLENNIUM CONFERENCE CENTRE” U.S. Reg. No. 2105874 for “business services, namely, consultation in the areas of business, catering and hotel management of others; business advisory and consultation services relating to hotel services franchising; providing facilities for business meetings; hotel concierge services; hotel services for preferred customers, making hotel reservations for others, providing facilities for conventions, food preparation, contract food services and catering”

 

“MILLENNIUM CLUB” U.S. Reg. No. 2438687 for “hotel concierge services; hotel services for preferred customers, making hotel reservations for others, providing facilities for conventions, food preparation, contract food services and catering”

 

“MILLENNIUM HOTELS AND RESORTS” U.S. Reg. No. 2141315 for “business services, namely, consultation in the areas of business, catering and hotel management of others; business advisory and consultation services relating to hotel services franchising; providing facilities for business meetings; hotel concierge services; hotel services for preferred customers, making hotel reservations for others, providing facilities for conventions, food preparation, contract food services and catering”

 

“MILLENNIUM BROADWAY” U.S. Reg. No. 2086330 for “providing convention facilities, providing facilities for exhibitions, making hotel accommodations and reservations for others, hotel management for others, providing banquet and social function facilities for special occasions, bar and cocktail lounge services, cafe services, restaurant services and catering services”

 

“MILLENIUM” U.S. Reg. No. 3009835 for “Hotel services, namely, hotel concierge services and hotel accommodation services for others; reservation services for hotel accommodation; room hire; provision of conference, convention, exhibition and banquet facilities; banqueting and catering services; providing social function facilities for special occasions; bar, cafe, restaurant services; cocktail lounge and coffee shop services; food preparation services”

 

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a potential consumer would be confused, mistaken, or deceived as to the source of the goods and services of the applicant and registrant.  See 15 U.S.C. §1052(d).  A determination of likelihood of confusion under Section 2(d) is made on a case-by case basis and the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) aid in this determination.  Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1349, 98 USPQ2d 1253, 1256 (Fed. Cir. 2011) (citing On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1085, 56 USPQ2d 1471, 1474 (Fed. Cir. 2000)).  Not all the du Pont factors, however, are necessarily relevant or of equal weight, and any one of the factors may control in a given case, depending upon the evidence of record.  Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d at 1355, 98 USPQ2d at 1260; In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont de Nemours & Co., 476 F.2d at 1361-62, 177 USPQ at 567.

 

In this case, the following factors are the most relevant:  similarity of the marks, similarity and nature of the goods and services, and similarity of the trade channels of the goods and services.  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.

 

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, the applied-for mark, “MILLENNIUM”, and the registered marks, “GRAND MILLENNIUM” U.S. Reg. No. 3763774, “GRAND MILLENNIUM” U.S. Reg. No. 3763773, “MILLENNIUM” U.S. Reg. No. 2166623, “MILLENNIUM CONFERENCE CENTRE” U.S. Reg. No. 2107804, “MILLENNIUM HOTELS AND RESORTS” U.S. Reg. No. 2277160, “MILLENNIUM” U.S. Reg. No. 2105875, “MILLENNIUM CONFERENCE CENTRE” U.S. Reg. No. 2107803, “MILLENNIUM” U.S. Reg. No. 2118358, “MILLENNIUM BROADWAY” U.S. Reg. No. 2038670, “MILLENNIUM BROADWAY” U.S. Reg. No. 2038669, “MILLENIUM” U.S. Reg. No. 2035445, “MILLENNIUM” U.S. Reg. No. 2035444, “MILLENNIUM CONFERENCE CENTRE” U.S. Reg. No. 2105874, “MILLENNIUM CLUB” U.S. Reg. No. 2438687, “MILLENNIUM HOTELS AND RESORTS” U.S. Reg. No. 2141315, “MILLENNIUM BROADWAY” U.S. Reg. No. 2086330, and “MILLENIUM” U.S. Reg. No. 3009835 are similar in appearance as the marks contain the identical word, “MILLENNIUM”. Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression.  See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii).

 

Additionally, the applied-for mark and the registered marks, “GRAND MILLENNIUM” U.S. Reg. No. 3763773, “MILLENNIUM HOTELS AND RESORTS” U.S. Reg. No. 2277160, “MILLENNIUM” U.S. Reg. No. 2105875, “MILLENNIUM CONFERENCE CENTRE” U.S. Reg. No. 2107803, “MILLENNIUM” U.S. Reg. No. 2118358, “MILLENNIUM BROADWAY” U.S. Reg. No. 2038670, “MILLENNIUM BROADWAY” U.S. Reg. No. 2038669, “MILLENIUM” U.S. Reg. No. 2035445, “MILLENNIUM” U.S. Reg. No. 2035444, “MILLENNIUM CONFERENCE CENTRE” U.S. Reg. No. 2105874,  and “MILLENNIUM CLUB” U.S. Reg. No. 2438687 are nearly identical as the marks contain the identical wording “MILLENNIUM” in connection with the nearly identical design of five vertical lines differing in size with the smallest being in the middle, thereby creating an impression of an association between the marks. Incorporating the entirety of one mark within another does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d).  See Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 1022, 194 USPQ 419, 422 (C.C.P.A. 1977) (finding CALIFORNIA CONCEPT and surfer design and CONCEPT confusingly similar); Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL and BENGAL LANCER and design confusingly similar); Hunter Indus., Inc. v. Toro Co., 110 USPQ2D 1651, 1660-61 (TTAB 2014) (finding PRECISION and PRECISION DISTRIBUTION CONTROL confusingly similar); TMEP §1207.01(b)(iii).  In the present case, the marks are identical in part.

 

Further, the Applicant’s services include services for the provision of food and drink and the Registrant’s services include various types of services providing food and drink, thereby increasing the similarity between the marks using the identical wording and in the above registrations, the almost identical design, in connection with closely related services. Where the services of an applicant and registrant are “similar in kind and/or closely related,” the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as in the case of diverse services.  In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); see Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1242, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004); TMEP §1207.01(b).

 

Comparison of the Goods and Services

The goods and services of the parties need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000) (“[E]ven if the goods in question are different from, and thus not related to, one another in kind, the same goods can be related in the mind of the consuming public as to the origin of the goods.”); TMEP §1207.01(a)(i). 

 

The respective goods and services 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 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).

 

Here, Applicant’s services, “services for providing food and drink” encompass all types of services that provide food and drink and are therefore related to the Registrant’s services in U.S. Reg. No. 3763773, “catering of food and drink”; U.S. Reg. No. 2166623, “bar and cocktail lounge services, cafe services, restaurant services and catering services”; U.S. Reg. No. 2107804, “food preparation, contract food services and catering”, U.S. Reg. No. 2277160, “bar, cafe', restaurant services; cocktail lounge and coffee shop services; and food preparation”, U.S. Reg. No. 2107803, “food preparation, contract food services and catering”, U.S. Reg. No. 2038670, “food preparation, contract food services and catering”, U.S. Reg. No. 2038669, “food preparation, contract food services and catering”, U.S. Reg. No. 2035445, “food preparation, contract food services and catering”, U.S. Reg. No. 2035444, “food preparation, contract food services and catering”, U.S. Reg. No. 2438687, “food preparation, contract food services and catering”, U.S. Reg. No. 2141315, “food preparation, contract food services and catering”, U.S. Reg. No. 2086330, “bar and cocktail lounge services, cafe services, restaurant services and catering services”, and U.S. Reg. No. 3009835, “bar, cafe, restaurant services; cocktail lounge and coffee shop services; food preparation services” are types of services for providing food and drink.

 

With respect to applicant’s and registrant’s goods and services, the question of likelihood of confusion is determined based on the description of the goods and services stated in the application and registration at issue, not on extrinsic evidence of actual use.  See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)). 

 

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 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 services and this wording is presumed to encompass all goods and services 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)).

 

Further, the Registrant in U.S. Reg. No. 3009835 and U.S. Reg. No. 2277160 provide “Coffee shop services” and Applicant’s goods include “coffee, tea”, which as the attached websites from Starbucks®; Dunkin Donuts®; and Caribou Coffee® show, entities providing coffee shop services also commonly provide coffee and tea goods under the same mark.

 

Additionally, the attached websites from Hilton® and Marriott® show the offering of various types of hotel, accommodation, business management, catering, and facility services along with the offering of coffee and services for providing food and drink.

 

This evidence establishes that the same entity commonly provides the relevant goods and services and markets the goods and services under the same mark and the relevant goods and services are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use.  Therefore, applicant’s and registrant’s goods and services are considered related for likelihood of confusion purposes.  See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.

 

PRIOR-FILED APPLICATIONS

The filing dates of pending U.S. Application Serial Nos. 86928428, 86552621, 86629977, 86504395, 86566890, 86783119, and 86794829 precede applicant’s filing date.  See attached referenced applications.  If one or more of the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s).  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced applications.

 

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 marks in the referenced applications.  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.

 

DESCRIPTION OF MARK REQUIRED

Applicant has submitted a color drawing and provided a color claim, but has not provided the required description specifying where color appears in the literal and design elements in the mark.  See 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §807.07(a)-(a)(ii).

 

Generic color names must be used to describe the colors in the mark, e.g., magenta, yellow, turquoise.  TMEP §807.07(a)(i)-(ii).  If black, white, and/or gray are not being claimed as a color feature of the mark, applicant must exclude them from the color claim and include in the mark description a statement that the colors black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark.  See TMEP §807.07(d).

 

Therefore, applicant must provide a mark description that specifies where all the colors appear in the literal and design elements in the mark.  See TMEP §807.07(a)(ii).  The following is suggested, if accurate:

 

The mark consists of the following:  a red square with a design of five white vertical lines in differing sizes with the two outer lines being the longest and the middle line being the shortest. Underneath is the word “MILLENNIUM” in a white stylized font.

 

 

IDENTIFICATION OF GOODS & SERVICES

The identification of goods and services is indefinite and must be clarified because the wording “Services for providing food and drink” in Class 043 must be clarified as to the type of services being provided, for example “providing food and drink via a mobile truck”. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

 

Applicant may adopt the following identification, if accurate: 

 

Class 030: Coffee, tea.

 

Class 043: Services for providing food and drink, namely, {Specify type of services by common commercial name in International Class 043, e.g. Mobile café services for providing food and drink, Providing of food and drink via a mobile truck, Providing of food and drink}

 

Applicant’s goods and services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably narrowed.  See 37 C.F.R. §2.71(a); TMEP §§1402.06, 1904.02(c)(iv).  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and services or add goods and services not found or encompassed by those in the original application or as acceptably narrowed.  See TMEP §1402.06(a)-(b).  The scope of the goods and services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b). Any acceptable changes to the goods and services will further limit scope, and once goods and services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).  Additionally, for applications 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).

 

Any acceptable changes to the goods and services will further limit scope, and once goods and services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

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.  See TMEP §1402.04.

 

ENTITY TYPE AND PLACE OF INCORPORATION CLARIFICATION

Applicant must specify its form of business or type of legal entity and its national citizenship or foreign country of organization or incorporation.  See 37 C.F.R. §§2.32(a)(3)(i)-(ii), 7.25(a)-(b); TMEP §§803.03, 803.04, 1904.02(a).  This information is required in all U.S. trademark applications, including those filed under Trademark Act Section 66(a) (also known as “requests for extension of protection of international registrations to the United States”).  See 37 C.F.R. §§2.32(a)(3)(i)-(ii), 7.25(a)-(b); TMEP §§803.03, 803.04, 1904.02(a). 

                                                  

Acceptable entity types include an individual, a partnership, a corporation, a joint venture, or the foreign equivalent.  See 37 C.F.R. §2.32(a)(3)(i)-(ii); TMEP §§803.03 et seq.

 

If applicant’s entity type is an individual, applicant must indicate his or her national citizenship for the record.  See 37 C.F.R. §2.32(a)(3)(i); TMEP §803.04.  If applicant’s entity type is a corporation, association, partnership, joint venture, or the foreign equivalent, applicant must set forth the foreign country under whose laws applicant is organized or incorporated.  37 C.F.R. §2.32(a)(3)(ii); TMEP §§803.03(b)-(c), 803.04.  For an association, applicant must also specify whether the association is incorporated or unincorporated, unless the foreign country and the designation or description “association/associazione” appear in Appendix D of the Trademark Manual of Examining Procedure (TMEP).  TMEP §803.03(c).

 

If applicant is organized under the laws of a foreign province or geographical region, applicant should specify both the foreign province or geographical region and the foreign country in which the province or region is located.  See TMEP §803.04.  To provide this information online via the Trademark Electronic Application System (TEAS) response form, applicant must (1) locate the “Entity Type” heading and select “Other;” (2) locate the “Specify Entity Type” heading and select “Other” under the Foreign Entity option, and enter in the free-text field below both applicant’s entity type and the foreign province or geographical region of its organization (e.g., partnership of Victoria); and (3) locate the “State or Country Where Legally Organized” heading and select the appropriate foreign country (e.g., Australia) under the Non-U.S. Entity option.  See id.

 

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. 

 

If the Applicant has any questions or requires assistance in responding to this Office Action, please telephone the assigned Examining Attorney.

 

 

 

/Jennifer O'Brien/

Examining Attorney

Law Office 120

(571)272-4579

Jennifer.O'Brien@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.