UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

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

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.

 

ISSUE/MAILING DATE: 4/12/2011

 

 

TEAS PLUS APPLICANTS MUST SUBMIT DOCUMENTS ELECTRONICALLY OR SUBMIT FEE:  Applicants who filed their application online using the reduced-fee TEAS Plus application must continue to submit certain documents online using TEAS, including responses to Office actions.  See 37 C.F.R. §2.23(a)(1).  For a complete list of these documents, see TMEP §819.02(b).  In addition, such applicants must accept correspondence from the Office via e-mail throughout the examination process and must maintain a valid e-mail address.  37 C.F.R. §2.23(a)(2); TMEP §§819, 819.02(a).  TEAS Plus applicants who do not meet these requirements must submit an additional fee of $50 per international class of goods and/or services.  37 C.F.R. §2.6(a)(1)(iv); TMEP §819.04.  In appropriate situations and where all issues can be resolved by amendment, responding by telephone to authorize an examiner’s amendment will not incur this additional fee.

 

APPLICANT SHOULD NOTE DEADLINE OF APRIL 19, 2011, FOR FILING INSURANCE EXTENSION –SEE DETAILED INFORMATION BELOW

 

The statement of use 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 Applicant Must Address

• Requirement for Acceptable Specimen

 

Specimen Unacceptable

 

Applicant was issued a notice of allowance for the mark DOMINION in standard character form for:

 

Leather coats; Leather headwear; Leather jackets; Leather shoes; Leather slippers, in Class 25.

 

In support of its statement of use, applicant has submitted a specimen described as “Scanned tags/labels for goods.”  The specimen consists of a front and back view of a goods hang tag showing the applied-for mark.  However, both views of the tag also include markings on the corners that indicate the tags are actually printer’s proofs for tags and not actual tags in use in commerce.

 

As a result, the specimen is not acceptable because it is a printer’s proof and thus does not show the applied-for mark in use in commerce.  Printer’s proofs are printed materials in draft form used for making corrections before a final print run.  As such, they are not disseminated to the public and do not show use of the mark in the ordinary course of trade on the actual goods that are sold or transported in commerce.  See In re The Signal Cos., 228 USPQ 956, 957-58 n.4 (TTAB 1986); TMEP §§904.04(a), 904.07(a). 

 

Trademark Act Section 45 requires that the mark be in “use in commerce” and defines such term to mean “the bona fide use of a mark in the ordinary course of trade.”  15 U.S.C. §1127.  A mark is used in commerce in relation to goods when it is used on the goods, containers for the goods, displays associated with the goods or tags or labels affixed to the goods, and the goods are sold or transported in commerce.  15 U.S.C. §1127; TMEP §901.01; see 37 C.F.R. §2.56(b)(1).

 

A statement of use must include a specimen showing the applied-for mark in use in commerce for each class of goods specified in the statement of use.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.56(a), 2.88(b)(2); TMEP §§904, 1109.09(b).

 

Therefore, applicant must submit the following:

 

(1)  A substitute specimen showing the mark in use in commerce for each class of goods specified in the statement of use; and

 

(2)  The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “The substitute specimen was in use in commerce prior to the expiration of the deadline for filing the statement of use.”  37 C.F.R. §2.59(b)(2); TMEP §904.05; see 37 C.F.R. §2.193(e)(1).  If submitting a substitute specimen requires an amendment to the dates of use, applicant must also verify the amended dates.  37 C.F.R. §2.71(c); TMEP §904.05.

 

Examples of specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale.  See TMEP §§904.03 et seq. 

 

Applicant may respond to the stated specimen refusal by submitting a verified substitute specimen by following the suggested directions below for responding either online or by mail. 

 

If applicant responds to this Office action online via the Trademark Electronic Application System (TEAS), applicant should provide a substitute specimen as follows:  (1) answer “yes” to the TEAS response form wizard question to “submit a new or substitute specimen;” (2) attach a jpg or pdf file of the substitute specimen; (3) select the statement that “The substitute specimen(s) was in use in commerce prior to the expiration of the deadline for filing the statement of use.”; and (4) sign personally or enter personally his/her electronic signature and date after the declaration at the end of the TEAS response form.  See 37 C.F.R. §§2.59(b)(2), 2.193(a), (c)-(d), (e)(1); TMEP §§611.01(c), 804.01(b).  Please note that these steps appear on different pages of the TEAS response form. 

 

If applicant experiences difficulty in submitting the required substitute specimen, supporting statement and/or declaration, please e-mail TEAS@uspto.gov for technical assistance regarding the TEAS response form.

 

If applicant responds to this Office action on paper, via regular mail, applicant may provide a verified substitute specimen by personally signing and dating the declaration below, and submitting a substitute specimen showing the applied-for mark in use in commerce.  See 37 C.F.R. §§2.20, 2.59(b)(2), 2.193(a)(1), (d), (e)(1); TMEP §§804.01(b), 904.05.

 

Pending receipt of a proper response, registration is refused because the specimen does not show the applied-for mark in use in commerce as a trademark.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.56(a), 2.88(b)(2); TMEP §§904, 904.07(a).

 

Insurance Extension

 

A statement of use cannot be withdrawn.  37 C.F.R. §2.88(g); In re Informix Software, Inc., 32 USPQ2d 1861 (Comm’r Pats. 1993); TMEP §§1109.02, 1109.17.  However, an applicant may file one request for an extension of time to file a statement of use (“insurance” extension request) after filing a statement of use if (1) there is time remaining in the six-month period in which the statement of use was filed, and (2) granting the extension request would not extend the time for filing the statement of use more than thirty-six months from the issuance of the notice of allowance.  37 C.F.R. §2.89(e)(1); TMEP §§1108.03, 1109.02.  Such an extension would allow applicant additional time only to cure any deficiencies with the statement of use, not to file another statement of use.  Because the applicant’s notice of allowance was issued on October 19, 2010, the applicant only has until April 19, 2011, to file such an extension request.

 

Should applicant file a timely “insurance” extension request after filing the statement of use, applicant would have until October 19, 2011, or 12 months from the date of issuance of the notice of allowance to cure any deficiencies with the statement of use.

 

If applicant files such an extension request, however, the response deadline to this Office action remains unchanged.  TMEP §1109.16(d).  A proper response must be received by the Office within six months from the date of issuance of this Office action to avoid abandonment of the application.  15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §1109.16(d).

 

ADVISORY – Foreign Attorney Not Authorized to Practice Before USPTO

 

The original application indicated that a foreign attorney represented applicant and was identified as the correspondent in this application.  Because the foreign attorney is not authorized to practice before the USPTO, the power of attorney in the initial application was void ab initio.  TMEP §602.03(e).  Because no Office action was issued prior to the application being approved for publication, the foreign attorney’s data was merely deleted from the attorney field of the USPTO database, and the applicant was not contacted.  However, the foreign attorney was authorized to remain listed as the correspondence addressee.  See id.

 

Now that an Office action is being issued, the applicant and foreign attorney are advised that the only attorneys who may sign responses and otherwise practice before the USPTO in trademark matters are as follows:

 

(1)        Attorneys in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and other federal territories and possessions of the United States; and

 

(2)        Canadian agents/attorneys who represent applicants located in Canada and (a) are registered with the USPTO and in good standing as patent agents or (b) have been granted reciprocal recognition by the USPTO.

 

See 37 C.F.R. §§2.17(e), 2.62(b), 11.1, 11.5(b)(2), 11.14(a), (c); TMEP §§602, 712.01.

 

Foreign attorneys, other than authorized Canadian attorneys, are not permitted to represent applicants before the USPTO.  See 37 C.F.R. §§2.17(e), 11.14(c), (e); TMEP §602.03-.03(b).  That is, a foreign attorney may not prepare a response or other document to be filed in the USPTO, sign responses to Office actions, or authorize issuance of examiner’s amendments and priority actions.  See 37 C.F.R. §§2.62(b), 11.5(b)(2); TMEP §§602.03(c), 608.01. 

 

Thus, unless the identified foreign attorney can establish that he or she is authorized under 37 C.F.R. §11.14, then this attorney is not authorized to practice before the USPTO in trademark matters and may not sign responses or otherwise represent applicant in this application.  See 37 C.F.R. §2.62(b); TMEP §602.03(e). 

 

ADVISORY – Change of Correspondence Address

 

A request to change the correspondence address was received for this application on March 20, 2011; however, based on the foregoing, it does not appear to have been signed by someone with legal authority to bind applicant.  See 37 C.F.R. §§2.18(b)(2), 2.193(e)(9)(ii); TMEP §§609.02(b), 611.02, 611.03(i).  The individual applicant or someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner) must sign a request to change the correspondence address.  37 C.F.R. §§2.18(b)(2), 2.193(e)(9)(ii); TMEP §611.03(i). 

 

In the present case, the party who signed the request to change the correspondence address is Samantha Curtis, Barrister and solicitor of the High Court of New Zealand who does not appear to have legal authority to bind applicant because she is not identified as an officer of the applicant company and is not identified as an attorney in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and other federal territories and possessions of the United States.  Therefore, the correspondence address will not be changed.

 

Response Guidelines

 

For this application to proceed toward registration, applicant must explicitly address each refusal and/or requirement raised in this Office action.  If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register.  Applicant may also have other options for responding to a refusal and should consider such options carefully.  To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements. 

 

In addition, applicant filed a TEAS Plus application and therefore must respond online using the Trademark Electronic Application System (TEAS) at http://www.gov.uspto.report/teas/index.htm to avoid incurring an additional fee.  See 37 C.F.R. §2.23(a)(1), (b). 

 

If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end, the trademark will fail to register, and the application fee will not be refunded.  See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a), 2.209(a); TMEP §§405.04, 718.01, 718.02.  Where the application has been abandoned for failure to respond to an Office action, applicant’s only option would be to file a timely petition to revive the application, which, if granted, would allow the application to return to live status.  See 37 C.F.R. §2.66; TMEP §1714.   There is a $100 fee for such petitions.  See 37 C.F.R. §§2.6, 2.66(b)(1).

 

Responses to Office actions must be properly signed.  See 37 C.F.R. §§2.62(b), 2.193(e)(2); TMEP §§712, 712.01.  Where an applicant is not represented by an attorney, the response must be signed by someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner).  See 37 C.F.R. §2.193(e)(2)(ii); TMEP §§611.03(b), 611.06 et seq., 712.01. 

 

Applicant may wish to hire a trademark attorney to assist in prosecuting this application because of the legal technicalities involved.  The Office, however, cannot aid in the selection of an attorney.  37 C.F.R. §2.11. 

 

As discussed above, foreign attorneys, other than authorized Canadian attorneys, are not permitted to represent applicants before the USPTO.  See 37 C.F.R. §§2.17(e), 11.14(c), (e); TMEP §602.03-.03(b).  That is, foreign attorneys may not file written communications, authorize an amendment to an application, or submit legal arguments in response to a requirement or refusal, among other things.  See 37 C.F.R. §11.5(b)(2); TMEP §§602.03(c), 608.01. 

 

The only attorneys who may practice before the USPTO in trademark matters are as follows:

 

(1)  Attorneys in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and other federal territories and possessions of the United States; and

 

(2)  Canadian agents/attorneys who represent applicants located in Canada and (a) are registered with the USPTO and in good standing as patent agents or (b) have been granted reciprocal recognition by the USPTO.

 

See 37 C.F.R. §§2.17(e), 11.1, 11.5(b)(2), 11.14(a), (c); TMEP §602.

 

If applicant has questions about the application or this Office action, please telephone the assigned trademark examining attorney at the telephone number below.

 

 

 

 

/Kim Teresa Moninghoff/

Trademark Examining Attorney

Law Office 113

Phone:  571-272-4738

Fax: 571-273-9113

Email:  kim.moninghoff@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 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 Trademark Applications and Registrations Retrieval (TARR) at http://tarr.gov.uspto.report/.  Please keep a copy of the complete TARR screen.  If TARR shows no change for more than six months, 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/teas/eTEASpageE.htm.

 

 

 

 

The undersigned being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements and the like may jeopardize the validity of the application or document or any registration resulting therefrom, declares that the substitute specimen was in use in commerce prior to the expiration of the deadline for filing the statement of use; all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.

 

_____________________________

(Signature)

 

_____________________________

(Print or Type Name and Position)

 

_____________________________

(Date)

 

 

 

IMPORTANT NOTICE REGARDING YOUR TRADEMARK APPLICATION

Your trademark application (Serial No. 85002542) has been reviewed.   The examining attorney assigned by the United States Patent and Trademark Office (“USPTO”) has written a letter (an “Office Action”) on 4/12/2011 to which you must respond.  Please follow these steps:

 

1. Read the Office letter by clicking on this link OR go to http://tmportal.gov.uspto.report/external/portal/tow and enter your serial number to access the Office letter.       

 

 PLEASE NOTE: The Office letter may not be immediately available but will be viewable within 24 hours of this e-mail notification. 

 

2. Respond within 6 months, calculated from 4/12/2011 (or sooner if specified in the Office letter), using the Trademark Electronic Application System Response to Office Action form. If you have difficulty using the USPTO website, contact TDR@uspto.gov. 

 

3. Contact the examining attorney who reviewed your application with any questions about the content of the office letter:

 

/Kim Teresa Moninghoff/

Trademark Examining Attorney

Law Office 113

Phone:  571-272-4738

Fax: 571-273-9113

Email:  kim.moninghoff@uspto.gov

WARNING

Failure to file any required response by the applicable deadline will result in the ABANDONMENT of your application.

Do NOT hit “Reply” to this e-mail notification, or otherwise attempt to e-mail your response, as the USPTO does NOT accept e-mailed responses.  Instead, please use the Trademark Electronic Application System Response to Office Action form.