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. 79205650
MARK: RAPHA
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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: Rapha Racing Ltd
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
INTERNATIONAL REGISTRATION NO. 1340504
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.
SUMMARY OF ISSUES APPLICANT MUST ADDRESS:
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION:
THIS PARTIAL REFUSAL APPLIES TO THE SPECIFIED GOODS IN CLASS 3 ONLY
Registration of the applied-for mark RAPHA is refused because of a likelihood of confusion with the mark in U.S. Registration No. 4459892. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
The cited registered mark is RAPHA INTERNATIONAL COSMETICS COLOR ME EARTH for the goods of “Cosmetics.”
General Principles in Determining Likelihood of Confusion
Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely that a potential consumer would be confused or 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). The court in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) listed the principal factors to be considered when determining whether there is a likelihood of confusion under Section 2(d). See TMEP §1207.01. However, not all of the factors are necessarily relevant or of equal weight, and any one factor may be dominant in a given case, depending upon the evidence of record. In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont, 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 of the goods, and similarity of trade channels of the goods. See In re Opus One, Inc., 60 USPQ2d 1812 (TTAB 2001); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593 (TTAB 1999); In re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999); TMEP §§1207.01 et seq.
Taking into account the relevant du Pont factors, a likelihood of confusion determination in this case involves a two-part analysis. First, the marks are compared for similarities in their appearance, sound, connotation and commercial impression. TMEP §§1207.01, 1207.01(b). Second, the goods are compared to determine whether they are similar or commercially related or travel in the same trade channels. See Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002); Han Beauty, Inc. v. Alberto-Culver Co., 236 F.3d 1333, 1336, 57 USPQ2d 1557, 1559 (Fed. Cir. 2001); TMEP §§1207.01, 1207.01(a)(vi).
Comparison of the Marks
In a likelihood of confusion determination, the marks are compared for similarities in their appearance, sound, meaning or 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). Similarity in any one of these elements may be sufficient to find a likelihood of confusion. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1043 (TTAB 1987); see TMEP §1207.01(b).
In this case, the applied-for mark is RAPHA, which is identical to the first word in the cited mark, RAPHA INTERNATIONAL COSMETICS COLOR ME EARTH. Consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (“VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); In re Integrated Embedded, 102 USPQ2d 1504, 1513 (TTAB 2016) (“[T]he dominance of BARR in [a]pplicant’s mark BARR GROUP is reinforced by its location as the first word in the mark.”); Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered” when making purchasing decisions).
Although the applied-for mark does not include the wording INTERNATIONAL COSMETICS COLOR ME EARTH, the mere deletion of wording from a registered mark may not be sufficient to overcome a likelihood of confusion. See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257 (Fed. Cir. 2010); In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii). Applicant’s mark does not create a distinct commercial impression because it contains the same common wording, RAPHA, as in the registered mark, and there is no other wording to distinguish it from the registered mark.
Therefore, the applied-for mark creates a highly similar commercial impression to the cited mark.
Comparison of the Goods
The goods and/or services of the parties need not be identical or directly competitive to find a likelihood of confusion. See Safety-Kleen Corp. v. Dresser Indus., Inc., 518 F.2d 1399, 1404, 186 USPQ 476, 480 (C.C.P.A. 1975); TMEP §1207.01(a)(i). Rather, they need only be related in some manner, or the conditions surrounding their marketing are such that they would be encountered by the same purchasers under circumstances that would give rise to the mistaken belief that the goods and/or services come from a common source. In re Total Quality Group, Inc., 51 USPQ2d 1474, 1476 (TTAB 1999); TMEP §1207.01(a)(i); see, e.g., On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086-87, 56 USPQ2d 1471, 1475-76 (Fed. Cir. 2000); In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1566-68, 223 USPQ 1289, 1290 (Fed. Cir. 1984).
In a likelihood of confusion analysis, the comparison of the parties’ goods and/or services is based on the goods and/or services as they are identified in the application and registration, without limitations or restrictions that are not reflected therein. In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1595 (TTAB 1999); see Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 1267-68, 62 USPQ2d 1001, 1004-05 (Fed. Cir. 2002); In re Thor Tech, Inc., 90 USPQ2d 1634, 1638-39 (TTAB 2009); TMEP §1207.01(a)(iii).
In this case, registrant's goods are “cosmetics,” which are defined as “substances that you use on your skin to make yourself look more attractive.” See the attached dictionary definition from http://www.macmillandictionary.com/dictionary/american/cosmetics. Registrant's goods therefore encompass a number of applicant's goods in Class 3 which are types of cosmetics, such as aftershave, non-medicated balms, skin lotion, ointments for cosmetic use, and fragrancing preparations. Unrestricted and broad identifications are presumed to encompass all goods and/or services of the type described. See In re Jump Designs, 80 USPQ2d 1370, 1374 (TTAB 2006); In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992).
In addition, the attached evidence from the following sources establishes that the same entity commonly provides the registrant's goods of cosmetics in addition to the goods identified in the application, such as toiletries, skin lotion, essential oils, cleaning and fragrancing preparations, and ointments or balms for cosmetic use:
Evidence obtained from the Internet may be used to support a determination under Trademark Act 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). The referenced evidence demonstrates that the relevant goods are provided by the same source, sold under the same mark through the same trade channels, and used by the same classes of consumers in the same or similar fields of use.
Therefore, the goods in the application and the registration 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).
Accordingly, the applied-for mark is refused registration under Trademark Act Section 2(d).
Options in Responding to the Partial Section 2(d) Refusal
(1) Delete the goods in Class 3 to which the refusal pertains, so that the mark may proceed toward publication for opposition for the goods and services to which the refusal does not apply. (Applicant must also file a timely response to this Office action that addresses all other issues raised in this action); or
(2) File a request to divide out the goods and services that have not been refused registration into a new application, so that they may proceed toward publication for opposition. 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 this Office action that addresses all outstanding issues raised in this action, including the refusal.) 37 C.F.R. §2.87(e)).
EXPLANATION OF MARK’S SIGNIFICANCE REQUIRED:
Failure to respond to a request for information is an additional ground for refusing registration. See In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re DTI P’ship LLP, 67 USPQ2d 1699, 1701 (TTAB 2003); TMEP §814.
ACCEPTABLE IDENTIFICATION OF GOODS AND SERVICES REQUIRED:
THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE SPECIFIED GOODS AND SERVICES
The following wording in the identification of goods and services is indefinite and must be clarified because the nature of the goods and services is unclear or because it could include goods or services in other international classes: “balms (non-medicated -); ointments for cosmetic use; toiletries; animal grooming preparations; aromatic extracts; abraders; cleaning and fragrancing preparations” in International Class 3; “shoes (protective -); visors [protective]; protective headgear; protective clothing [body armour]; DVDs; downloadable publications; downloadable image files; recorded content; information technology and audiovisual equipment; magnetizers and demagnetizers; apparatus, instruments and cables for electricity; optical devices, enhancers and correctors; safety, security, protection and signalling devices; diving equipment; navigation, guidance, tracking, targeting and map making devices; measuring, detecting and monitoring instruments, indicators and controllers; scientific research and laboratory apparatus, educational apparatus and simulators; and parts and fittings of all the aforesaid goods, included in the class” in International Class 9; “Books; magazines; decoration and art materials and media; filtering materials of paper; bags and articles for packaging, wrapping and storage of paper, cardboard or plastics; educational supplies; money holders; disposable paper products; printed matter; and parts and fittings of all the aforesaid goods, included in the class” in International Class 16; “Arranging travel tours; organization of travel tours; organization of holidays for travel; sightseeing [tourism]; travel reservation; dispatch of goods; guide services (travel -); transport; parking and vehicle storage, mooring; and storage space; and advice, consultancy and information for the aforesaid, included in the class” in International Class 39; “organizing sporting events; organisation of parties; provision of recreational events; tv entertainment services; production of tv shows; electronic games provided by means of the internet; entertainment provided via the internet; providing on-line electronic publications; publishing and reporting; education, entertainment and sports; interpretation; and advice, consultancy and information for the aforesaid, included in the class” in International Class 41; and “canteens; accommodation services; temporary accommodation; and advice, consultancy and information for the aforesaid, included in the class” in International Class 43. See TMEP §§1402.01, 1402.03.
Applicant must amend the indefinite wording by specifying the common commercial or generic name for the goods and services. If there is no common commercial or generic name for the goods, applicant must describe the product and intended consumer as well as its main purpose and intended uses. If there is no common commercial or generic name for the services, applicant must specify the nature of the services as well as their main purpose and their field of use or channels of trade.
In the identification of goods, applicant must use the common commercial or generic names for the goods, be as complete and specific as possible, and avoid the use of indefinite words and phrases. TMEP §1402.03(a); see 37 C.F.R. §2.32(a)(6). If applicant uses indefinite words such as “apparatus,” “articles,” “devices,” “materials,” or “parts,” such wording must be followed by “namely,” and a list of each specific product identified by its common commercial or generic name. See TMEP §§1401.05(d), 1402.03(a).
The wording “parts and fittings of all the aforesaid goods, included in the class” at the end of Classes 9 and 16 is indefinite and must be clarified because it is “catch-all” wording that fails to identify specific goods. Applicant may indicate the parts and fittings are “replacement parts and fittings,” if accurate. Alternatively, applicant must insert the word “namely” after the identification and provided to list each of the individual parts and fittings by their common commercial or generic names.
The wording “advice, consultancy and information for the aforesaid, included in the class” at the end of Classes 39, 41 and 43 is indefinite and must be (1) clarified to indicate the specific fields of the consulting and information, or (2) deleted. See TMEP §§1402.01, 1402.03(a). This wording constitutes open-ended “catch-all” wording that is not acceptable because it fails to identify specific services.
The use of parentheses and brackets in the identification of goods and services is indefinite and must be clarified. Generally, neither parentheses nor brackets should be used in identifications. TMEP §1402.12. Parenthetical information is permitted in identifications only if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity of the identification, e.g., “obi (Japanese sash).” Further, the USPTO generally uses brackets to indicate goods and/or services that have been deleted from registrations. See id. Therefore, applicant must remove the parentheses and brackets from the identification of goods and services and incorporate the parenthetical and bracketed information into the identification.
Amended Version of the Identification of Goods and Services
For applicant’s convenience, following is an amended version of the identification that complies with the above clarification requirements. Suggestions are shown italicized. Applicant must fill in the blanks as directed below.
Applicant may adopt the following amended identification, if accurate:
CLASS 3: Aftershave; non-medicated body balms; skin lotion; hair wax; general purpose non-medicated ointments for cosmetic use; non-medicated toiletry preparations; animal grooming preparations, namely, __________ {indicate type of preparations, e.g., shampoo, deodorants}; essential oils and aromatic oil extracts; abraders, namely, __________ {indicate type of abrading goods in Class 3, e.g., body scrubs, facial scrubs, scrubbing powder}; cleaning and fragrancing preparations, namely, __________ {indicate name of preparations in Class 3, e.g., all-purpose cleaning preparations, fragrances for personal use, room fragrances}; tailors’ and cobblers’ wax.
CLASS 9: Sunglasses; protective eyewear; cyclists' glasses; protective industrial shoes; protective helmet visors; protective headgear, namely, __________ {indicate type of headgear in Class 9, e.g., protective helmets, sports helmets}; protective clothing, namely, body armor; DVDs in the field of _________ {state subject matter, e.g., bicycling, fashion, travel}; downloadable publications in the nature of __________ {indicate specific type of publication, e.g., books, magazines, newsletters} in the field of __________ {indicate subject matter of publications, e.g., bicycling, fashion, travel}; downloadable music files; downloadable image files in the field of _________ {state subject matter, e.g., bicycling, fashion, travel}; recorded content in the nature of __________ {state type of recorded content, e.g., DVDs, CDs, downloadable multimedia files} in the field of __________ {specify subject matter of content, e.g., bicycling, fashion, travel}; information technology and audiovisual equipment, namely, __________ {indicate type of equipment in Class 9, e.g., computers, data-processing equipment, audio headphones, multimedia projectors}; magnets, magnetizers and demagnetizers, namely, __________ {indicate type in Class 9, e.g., magnets for industrial purposes, erasing magnets, demagnetizers for magnetic tapes}; apparatus, instruments and cables for electricity, namely, __________ {indicate type of goods in Class 9, e.g., electrical connections, electrical cables, apparatus and instruments for conveying and controlling electric current}; optical devices, enhancers and correctors, namely, __________ {indicate type of goods in Class 9, e.g., optical cables, optical readers, optical lenses}; safety, security, protection and signalling devices, namely, __________ {specify type of devices in Class 9, e.g., safety helmets, security alarm controllers, digital signal processors}; diving equipment, namely, __________ {specify type of equipment in Class 9, e.g., diving goggles, scuba diving masks, diving suits}; navigation, guidance, tracking, targeting and map making devices, namely, __________ {specify type of devices in Class 9, e.g., electric navigational instruments, GPS tracking devices, wearable activity trackers}; measuring, detecting and monitoring instruments, indicators and controllers, namely, __________ {specify type of goods in Class 9, e.g., instruments for measuring length, measuring rulers}; scientific research and laboratory apparatus, namely, __________ {specify type of apparatus in Class 9, e.g., GPS sensor chips for scientific use, laboratory glassware, beakers}; educational apparatus and simulators, namely, __________ {specify type of apparatus in Class 9, e.g., electronic sports training simulators, sports training eyeglasses}; replacement parts and fittings of all the aforesaid goods {if the goods include parts other than replacement parts, applicant should insert the word "namely" and proceed to list each part and fitting by its common commercial or generic name, listing only goods in Class 9}.
CLASS 16: Books in the field of __________ {indicate subject matter, e.g., bicycling, fashion, travel}; magazines in the field of __________ {indicate subject matter, e.g., bicycling, fashion, travel}; calendars; posters; works of art and figurines of paper and cardboard, and architects’ models; decoration and art materials and media, namely, __________ {specify type of products in Class 16, e.g., paper party decorations, paint brushes, art pads}; filtering materials of paper, namely, filter paper; plastic or paper bags for household use and articles for packaging, wrapping and storage of paper, cardboard or plastics, namely, _________ {specify articles in Class 16, e.g., cardboard packaging, paper for wrapping and packaging, plastic film for wrapping}; stationery and educational supplies, namely, __________ {specify type of supplies in Class 16, e.g., paper, pencils, pens}; adhesives for stationery or household purposes; money clips; disposable paper products, namely, __________ {specify type of products in Class 16, e.g., paper bags, paper napkins}; printed matter, namely, __________ {specify the type of printed matter, e.g., books, magazines, newsletters} in the field of ___________ {specify the subject matter of the printed matter, e.g., bicycling, fashion, travel}; paper and cardboard; replacement parts and fittings of all the aforesaid goods {if the goods include parts other than replacement parts, applicant should insert the word "namely" and proceed to list each part and fitting by its common commercial or generic name, listing only goods in Class 16}.
CLASS 39: Arranging transport for travel tours; organization of transport for travel tours; organization of transport for holidays for travel; booking of seats for travel; rental of vehicle roof racks; providing transport for sightseeing tours; travel ticket reservation service; vehicle rental; shipping of goods; gift wrapping; travel guide services; transport, namely, ___________ {specify mode of transport, e.g., railway transport, car transport, bus transport}; packaging and storage of goods; vehicle parking and vehicle storage; providing vessel mooring facilities; rental, hire and leasing of vehicles and vehicle storage space; and advice, consultancy and information in the fields of _________ {indicate the fields with specificity, listing only subject matter in Class 39, e.g., transport, travel, rental and storage of vehicles}
CLASS 41: Organization of bicycle races; organizing sporting events, namely, ____________ {indicate type of event being organized, e.g., bicycling events, swimming meets, soccer competitions}; organisation of parties, namely, party planning; timing of sports events; provision of recreational events, namely, ____________ {indicate type of events being provided, e.g., bicycling events, swimming meets, soccer competitions}; television entertainment services, namely, ____________ {indicate type of services, e.g., entertainment services in the nature of creation, development, and production of television programming}; production of television shows; electronic game services provided by means of the internet; entertainment provided via the internet, namely, ____________ {indicate type of entertainment services, e.g., providing online electronic games}; video production services; videotape production; production and distribution of films and videos; production and distribution of radio and television programmes; providing a website featuring non-downloadable electronic publications in the nature of __________{indicate specific type of publication, e.g., books, magazines, newsletters} in the field of __________ {indicate subject matter of the publications, e.g., bicycling, fashion, travel}; publishing of _________ {specify what is published, e.g., magazines, newspapers, books}; news reporter services; education, entertainment and sports, namely, ____________ {specify type of services in Class 41, e.g., sports training, organizing exhibitions for educational, entertainment and sporting purposes}; translation and language interpretation; rental, hire and leasing of audio visual equipment, sporting equipment and sporting facilities; advice, consultancy and information in the fields of _________ {indicate the fields with specificity, listing only subject matter in Class 41, e.g., entertainment, sports, publishing}
CLASS 43: Bar services; restaurant services; cafés; coffee shops; canteen services; food and drink catering; snack-bars; mobile catering services; accommodation services, namely, _________ {indicate type in Class 43, e.g., hotel and motel services}; provision of conference, exhibition, temporary office and meeting facilities; providing temporary accommodation; animal boarding; rental of furniture, linens and table settings; provision of food and drink; rental, hire and leasing of temporary accommodation, chairs, tables, table linen, glassware and bar equipment; advice, consultancy and information in the fields of _________ {indicate the fields with specificity, listing only subject matter in Class 43, e.g., bar and restaurant services, hotels, providing temporary accommodations}
Identification Manual Available Online
For further assistance with identifying and classifying the goods and/or services, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
Identification Amendment Advisories
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, 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. 37 C.F.R. §2.85(f); TMEP §§1402.07(a), 1904.02(c). Therefore, 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, nor may an applicant 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).
HOW TO RESPOND TO THIS LETTER: Applicant should file a response online via the Trademark Electronic Application System (TEAS), using the Response to Examining Attorney Office Action Form available at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.
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.
/Kristin Carlson/
Trademark Examiner, LO 105
800-786-9199 (trademark helpline)
571-272-2240 (direct dial)
kristin.carlson@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.