Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

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

 

 

 

OFFICE ACTION

 

 

 

INTERNATIONAL REGISTRATION NO. 1327843

 

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 issue(s) 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 – Likelihood of Confusion
• Prior Pending Application
• Identification of Goods/Services

 

Refusal – Likelihood of Confusion

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 5062340, 5062482, 4479392 and 4509740.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

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/or 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/or services, and similarity of the trade channels of the goods and/or 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.

 

 

In any likelihood of confusion determination, two key considerations are similarity of the marks and similarity or relatedness of the goods and/or services.  In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1516 (TTAB 2016) (citing Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976)); see TMEP §1207.01.  That is, the marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression.  In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting 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).  Additionally, the goods and/or services are compared to determine whether they are similar or commercially related or travel in the same trade channels.  See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §1207.01, (a)(vi).

 

Similarity of 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).

 

 

Applicant’s mark is ILLUME for Paper; cardboard; towels of paper; table napkins of paper; paper and cardboard coasters; covers (stationery); packaging materials made of paper or cardboard; advertisement boards of paper or cardboard; filter paper; handkerchiefs of paper; toilet paper; bottle envelopes of cardboard or paper; packing paper; packaging containers of cardboard or paper; bags (envelopes, pouches) of paper or plastics, for packaging; printed matter; leaflets; magazines; books; printed publications; newspapers; newsletters; prospectuses; manuals handbooks; booklets and graphic representations; cards; postcards; greeting cards; brochures and folders (stationery); bookbinding material; photographs (printed); periodicals; pictures; posters; placards of paper or cardboard; catalogues; transparencies (stationery); flags of paper; boxes and signboards of paper or cardboard; calendars; clipboards; stationery; pads stationery; pens and pencils; erasers and paperweights; transfers decalcomanias; stickers stationery; labels, including iron-on labels not of textile; adhesives glues for stationery or household purposes; artists' materials, including pencils, pastels (crayons), watercolours (paintings), aquarelles, artists' watercolour saucers, painters' easels; drawing, painting and modelling materials and instruments; paint brushes; stamps (seals); typewriters, electric and non-electric; office requisites, except furniture; instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); plastic film for wrapping; plastic bubble packs for wrapping or packaging; printers' type; printing blocks; writing slates and blackboards; writing and drawing instruments; writing and drawing materials; self-adhesive tapes for stationery or household purposes; money clips; works of art and figurines of paper and cardboard, and architects' models; decoration and art materials made of paper and cardboard; filtering materials of paper; disposable paper products; and Education; teaching; tuition; academies (education); recreational parks and amusement parks; providing of training, including practical training (demonstration); entertainment; cinema presentations; club services (entertainment or education); entertainer services; entertainment information; presentation of live performances; movie theatre presentations; music-halls; musical performances; radio, music, cinema and television entertainment; circuses; sporting and cultural activities; educational services and coaching in the field of motor sports, as well as entertainment services, namely, performing and competing in motor sports events; sports facility services for racing and sport teams, in particular in the motorsport sector; providing sports facilities for racing and sport teams, in particular in the motorsport sector; organization of sports competitions with racing and sport teams, in particular in the motorsport sector; organization and staging of sports competitions; night club services; discotheque services; organization of fairs and exhibitions for cultural, sporting or educational purposes; rental of videotapes and cassettes, CD-ROMs and DVDs, cine-films and motion pictures; rental of movie projectors and accessories; providing cinema and movie theatre facilities; providing museum facilities; rental of radio and television sets; rental of video cassette recorders; rental of audio equipment; rental of camcorders; rental of lighting apparatus for theatrical sets or television studios; rental of show or stage scenery; rental of video cameras; script writing services; rental of games equipment and sound recordings; cinema, movie and video film production, other than advertising films; videotaping; film editing services and microfilming; publication and editing of digital images; bookmobile services; publication of books, texts (other than publicity texts), electronic books and journals on-line; electronic desktop publishing; providing on-line electronic publications, not downloadable; news reporters services; photographic reporting; production of radio and television programs and shows; providing sports facilities; publication and writing of texts, other than publicity texts; game services provided on-line from a computer network; providing karaoke services; music composition and production services; layout services, other than for advertising purposes; animal training; health club services health and fitness training; library services; operating lotteries; language interpreter services; arranging and conducting of seminars, conferences, symposiums, workshops, congresses, contests and concerts; recreation information; party planning (entertainment); dubbing; gambling; photography; radio entertainment; recording studio and television studio services; rental of sports grounds and stadium facilities; subtitling.

 

The registered marks are:  (1) ILLUME for Providing links to the web sites of others featuring educational learning materials in the nature of relevant reading lists, syllabi, course notes, and lecture presentations; Providing a website featuring online nondownloadable software tools for higher education instructors to create courses through the discovery and evaluation, scheduling, and purchase of learning materials by their students to include textbooks and other books, case studies, tutorials, newspaper, magazine, and journal articles, problem sets, simulations, videos and Internet material; (2) ILLUME LEARNING for Providing links to the web sites of others featuring educational learning materials in the nature of relevant reading lists, syllabi, course notes, and lecture presentations; Providing a website featuring online nondownloadable software tools for higher education instructors to create courses through the discovery and evaluation, scheduling, and purchase of learning materials by their students to include textbooks and other books, case studies, tutorials, newspaper, magazine, and journal articles, problem sets, simulations, videos and Internet material; (3) ILUUM for Education, namely, conducting classes, seminars and workshops in the field of nordic walking; providing of training, namely, athletic training services in the field of nordic walking; entertainment, namely, organizing and conducting nordic walking competitions; organizing community sporting and cultural activities; and (4) ILUME for Hotel accommodation services; hotel services; hotel services for preferred customers; providing temporary lodging services in the nature of a condominium hotel; Pet boarding and daycare services for dogs.

 

Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression.  See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii).  Greater weight is often given to this dominant feature when determining whether marks are confusingly similar.  See In re Nat’l Data Corp., 753 F.2d at 1058, 224 USPQ at 751.

 

With respect to applicant’s and registrants’ marks, the respective marks contain phonetically similar initial terms – namely, ILLUME, ILLUM or ILUUM.

 

Thus, the marks are confusingly similar.

 

Similarity of Goods and Services

 

The goods and/or 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). 

 

Also, with respect to applicant’s and registrants’ goods and/or services, the question of likelihood of confusion is determined based on the description of the goods and/or 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)). 

 

Absent restrictions in an application and/or registration, the identified goods and/or services are “presumed to 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)).  Additionally, unrestricted and broad identifications are presumed to encompass all goods and/or services of the type described.  See In re Jump Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB 2006) (citing In re Elbaum, 211 USPQ 639, 640 (TTAB 1981)); In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992). 

 

In this case, the identification set forth in the application and registration(s) 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 all normal channels of trade, and are available to the same class of purchasers.  Further, the application use(s) broad wording to describe the goods and/or services and this wording is presumed to encompass all goods and/or services of the type described, including those in registrants’ more narrow identification.

 

Here, both applicant and registrants provide various education/educational-related services (and/or books/publications in the same related fields of registrants).

 

Also, with respect to Registration No.  4509740, the trademark examining attorney has attached evidence from the USPTO’s X-Search database consisting of a number of third-party marks registered for use in connection with the same or similar goods and/or services as those of both applicant and registrant in this case.  This evidence shows that the goods and/or services listed therein, namely (a) night clubs and (b) hotels, are of a kind that may emanate from a single source under a single mark.  See In re Aquamar, Inc., 115 USPQ2d 1122, 1126 n.5 (TTAB 2015) (citing In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); TMEP §1207.01(d)(iii).

 

Because the marks are so highly similar and the goods and services are so closely related, there is a likelihood that purchasers would confuse the sources of the goods and services or believe they stemmed from a single source.  Accordingly, registration is properly refused under Section 2(d) of the Trademark Act due to a likelihood of confusion.

 

Prior Pending Application

Also, the filing date of pending U.S. Application Serial No. 86609358 precedes applicant’s filing date.  See attached referenced application.  If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks.  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 application.

 

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.

 

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.  However, if applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.

 

Identification of Goods and Services

The identification of goods and services is indefinite and must be clarified because applicant must better define the various goods and services for which registration is sought.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must specify the common commercial or generic name for the services.  If the services have no common commercial or generic name, applicant must describe the nature of the services as well as their main purpose, channels of trade, and the intended consumer(s).

 

Applicant may adopt the following identification, if accurate (suggested edits in bold):

 

Paper; cardboard; towels of paper; table napkins of paper; paper and cardboard coasters; covers, namely, book covers and document covers; packaging material of paper or cardboard; advertisement boards of paper or cardboard; filter paper; handkerchiefs of paper; toilet paper; bottle envelopes of cardboard or paper; packing paper; packaging containers of paper; plastic or paper bags in the nature of envelopes and pouches for merchandise packaging; printed matter, namely, leaflets, magazines, books, newspapers, printed newsletters, periodicals, catalogues, prospectuses, brochures, folders, manuals, handbooks, booklets, reports and graphic prints and representations in the fields of sports, energy drinks, music, photography, travel, current events, pop culture, religion, celebrities, athletes, artists, musicians, photographers, politicians, entertainment, night life, adventure, nature, science, history, education, mobile electronic devices, art, nutrition, engineering, architecture, health, agriculture, creative arts, fitness, sporting and cultural events, culture, information technology, business and management, and gaming; bookbinding material; printed photographs; posters; placards of paper or cardboard; paper and plastic transparencies; flags of paper; boxes and signboards of paper or cardboard; calendars; clipboards; stationery; writing pads and drawing pads; pens and pencils; erasers and paperweights; decalcomanias; stickers; labels, namely, iron-on labels not of textile; adhesives for stationery or household purposes; artists' materials, namely, pencils, pastels, watercolor paintings, aquarelles, artists' watercolor saucers, painters' easels; drawing instruments, painting and modelling materials, namely, modelling clay, modelling paste and moulds for modelling clay for use by adults; paint brushes; sealing stamps; typewriters, electric and non-electric; office requisites, namely, envelope sealing machines, punches, and staplers; printed instructional and teaching material in the fields of sports, energy drinks, music, photography, travel, current events, pop culture, religion, celebrities, athletes, artists, musicians, photographers, politicians, entertainment, night life, adventure, nature, science, history, education, mobile electronic devices, art, nutrition, engineering, architecture, health, agriculture, creative arts, fitness, sporting and cultural events, culture, information technology, business and management, and gaming; plastic sachets and bags sold empty for packaging; plastic film for wrapping; plastic bubble packs for wrapping or packaging; printers' type; printing blocks; slate and black boards; writing and drawing instruments; writing and drawing materials, namely, pencils, pens, pastels, crayons, brushes, markers, drawing materials for blackboards, and sketch pads; self-adhesive tapes for stationery or household purposes; money clips; works of art and figurines of paper and cardboard, and architects' models; decoration and art materials made of paper and cardboard, namely, paper party decorations; filter paper; disposable paper products, namely, disposable napkins, in Class 16

 

 

Educational services, namely, providing, arranging and conducting seminars, classes, courses, conferences and workshops in the field of sports, art, culture, entertainment, travel, music and photography; teaching in the field of sports, art, culture, entertainment, travel, music and photography; tuition, namely, tutoring in the field of sports, art, culture, entertainment, travel, music and photography; education academies in the field of sports, art, culture, entertainment, travel, music and photography; recreational parks and amusement parks; providing of training and practical training demonstrations in the field of sports, art, culture, entertainment, travel, music and photography; entertainment, namely, producing and presenting musical performances, radio and television programs, theater performances, theatrical performances in the nature of musical, cultural and artistic exhibitions, musical, cultural and artistic shows, and live musical performances; presentation of live show performances; movie theaters providing movie theatre presentations; live musical performances; entertainment services, namely, presentation of live musical and theatrical performances, providing an ongoing radio and television program in the field of news, special interest features, sports, people, art, culture, entertainment, night life, travel, adventure, music and photography; music, namely, live performances by an individual musical artist or musical group; cinema theaters; circuses; sporting and cultural activities, namely, organizing community sporting and cultural events; educational services, namely, providing classes and seminars  and coaching in the field of motor sports; entertainment, namely, organizing motor sports events and competitions; providing sports facilities for racing and sport teams, in particular in the motorsport sector; organization of sports competitions with racing and sport teams, in particular in the motorsport sector; organization and staging of sports competitions; night club services; discotheque services; organization of fairs and exhibitions for cultural, sporting or educational purposes; rental of videotapes and cassettes, CD-ROMs and DVDs, cine-films and motion pictures; rental of movie projectors and accessories therefor; providing cinema and movie theatre facilities; providing museum facilities; rental of radio and television sets; rental of video cassette recorders; rental of audio equipment; rental of camcorders; rental of lighting apparatus for theatrical sets or television studios; rental of show or stage scenery; rental of video cameras; script writing services for non-advertising purposes; rental of games equipment and sound recordings; cinema, movie and video film production, other than advertising films; videotaping; film editing services and microfilming; digital imaging services; bookmobile services; on-line publication of books and texts other than publicity texts, electronic books and journals; electronic desktop publishing; providing non-downloadable electronic publications in the nature of magazines, journals, newsletters, periodicals, electronic books, blogs, and photo books in the fields of sports, energy drinks, music, photography, travel, current events, pop culture, religion, celebrities, athletes, artists, musicians, photographers, politicians, entertainment, night life, adventure, nature, science, history, education, mobile electronic devices, art, nutrition, engineering, architecture, health, agriculture, creative arts, fitness, sporting and cultural events, culture, and gaming; news reporters services; photographic reporting; production of radio and television programs and shows; providing sports facilities; publication and writing of texts, other than publicity texts; game services provided on-line from a computer network, namely, entertainment services in the nature of providing on-line computer games; providing karaoke services, namely, providing karaoke facilities, karaoke machine rental services, and hosting karaoke parties for others; music composition and production services; layout services, other than for advertising purposes; animal training; health club services featuring health and fitness training, namely, providing instruction and equipment in the field of physical exercise; library services; operating lotteries; language interpreter services; arranging and conducting of seminars, conferences, symposiums, workshops and congresses in the fields of sports, energy drinks, music, photography, travel, current events, pop culture, religion, celebrities, athletes, artists, musicians, photographers, politicians, entertainment, night life, adventure, nature, science, history, education, mobile electronic devices, art, nutrition, engineering, architecture, health, agriculture, creative arts, fitness, sporting and cultural events, culture, information technology, business and management, and gaming; arranging and conducting of contests and concerts; recreation information; party planning; dubbing; gambling services; photography; radio entertainment production; recording studio and television recording studio services; rental of sports grounds and stadium facilities; subtitling, in Class 41

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See 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); and the classification of goods and/or services may not be changed from that assigned by the International Bureau.  37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b).  Further, in a multiple-class Section 66(a) application, classes may not be added or goods and/or services transferred from one existing class to another.  37 C.F.R. §2.85(d); TMEP §1401.03(d).

 

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.

 

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. 

 

 

 

 

/Marc J. Leipzig/

Law Office 115

Trademark Examining Attorney

Phone:  (571) 272-2104

marc.leipzig2@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.