Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

NONFINAL OFFICE ACTION

 

International Registration No. 1551549A

 

Notice of Provisional Full Refusal

 

Deadline for responding.  The USPTO must receive applicant’s response within six months of the “date on which the notification was sent to WIPO (mailing date)” located on the WIPO cover letter, or the U.S. application will be abandoned (see http://www.gov.uspto.report/trademarks-application-process/abandoned-applications for information on abandonment).  To confirm the mailing date, go to the USPTO’s Trademark Status and Document Retrieval (TSDR) database at http://tsdr.gov.uspto.report/, select “US Serial, Registration, or Reference No.,” enter the U.S. application serial number in the blank text box, and click on “Documents.”  The mailing date used to calculate the response deadline is the “Create/Mail Date” of the “IB-1rst Refusal Note.” 

 

Respond to this Office action using the USPTO’s Trademark Electronic Application System (TEAS).  A link to the appropriate TEAS response form appears at the end of this Office action.

 

Discussion of provisional full refusal.  This is a provisional full refusal of the request for extension of protection to the United States of the international registration, known in the United States as a U.S. application based on Trademark Act Section 66(a).  See 15 U.S.C. §§1141f(a), 1141h(c). 

 

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

• Search Results
• U.S. Counsel Required

 

SEARCH OF USPTO DATABASE OF MARKS

 

The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting registered marks that would bar registration under Trademark Act Section 2(d).  15 U.S.C. §1052(d); TMEP §704.02.  However, marks in prior-filed pending applications may present a bar to registration of applicant’s mark.

 

The filing date of pending U.S. Application Serial No. 79291040 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.

 

If applicant responds to this issue, applicant must also respond to the requirement set forth below.

 

EMAIL AND U.S. COUNSEL REQUIRED

 

Email address required.  Applicant must provide applicant’s email address, which is a requirement for a complete application.  See 37 C.F.R. §2.32(a)(2); Mandatory Electronic Filing & Specimen Requirements, Examination Guide 1-20, at III.A. (Rev. Feb. 2020).  Applicant’s email address cannot be identical to the listed primary correspondence email address of any attorney retained to represent applicant in this application.  See Examination Guide 1-20, at III.A. 

 

Applicant must be represented by a U.S.-licensed attorney to respond to or appeal the provisional refusal.  An applicant whose domicile is located outside of the United States or its territories is foreign-domiciled and must be represented by an attorney who is an active member in good standing of the bar of the highest court of a U.S. state or territory.  37 C.F.R. §§2.11(a), 11.14; Requirement of U.S.-Licensed Attorney for Foreign-Domiciled Trademark Applicants & Registrants, Examination Guide 4-19, at I.A. (Rev. Sept. 2019).  An individual applicant’s domicile is the place a person resides and intends to be the person’s principal home.  37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A.  A juristic entity’s domicile is the principal place of business; i.e., headquarters, where a juristic entity applicant’s senior executives or officers ordinarily direct and control the entity’s activities.  37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A.  Because applicant is foreign-domiciled, applicant must appoint such a U.S.-licensed attorney qualified to practice under 37 C.F.R. §11.14 as its representative before the application may proceed to registration.  37 C.F.R. §2.11(a).  See Hiring a U.S.-licensed trademark attorney at http://www.gov.uspto.report/trademarks-getting-started/why-hire-private-trademark-attorney for more information. 

 

Only a U.S.-licensed attorney can take action on an application on behalf of a foreign-domiciled applicant.  37 C.F.R. §2.11(a).  Accordingly, the USPTO will not communicate further with applicant about the application beyond this Office action or permit applicant to make future submissions in this application. 

 

To appoint or designate a U.S.-licensed attorney.  To appoint an attorney, applicant should submit a completed Trademark Electronic Application System (TEAS) Change Address or Representation form at http://teas.gov.uspto.report/wna/ccr/car.  The newly-appointed attorney must submit a TEAS Response to Examining Attorney Office Action form at http://teas.gov.uspto.report/office/roa/ indicating that an appointment of attorney has been made and address all other refusals or requirements in this action, if any.  Alternatively, if applicant retains an attorney before filing the response, the attorney can respond to this Office action by using the appropriate TEAS response form and provide his or her attorney information in the form and sign it as applicant’s attorney.  See 37 C.F.R. §2.17(b)(1)(ii).

 

RESPONSE TO THIS ACTION

 

How to respond.  Click to file a response to this nonfinal Office action.    

 

 

/Charlotte K. Corwin/

Charlotte K. Corwin

Examining Attorney

Law Office 119

(571) 270-1532

charlotte.corwin@USPTO.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.