Offc Action Outgoing

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: 9/14/2010

 

Applicant is encouraged to telephone the assigned trademark examining attorney to resolve the issues raised in this Office action.

 

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

 

DRAWING OF THE MARK

The mark on the specimen disagrees with the mark on the drawing.  In this case, the specimen submitted with the application does not show the mark in color. However, the drawing shows the mark in the colors blue, white, black and yellow.

 

An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each class of goods and/or services.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).  The mark on the drawing must be a substantially exact representation of the mark on the specimen.  37 C.F.R. §2.51(a); TMEP §807.12(a); see 37 C.F.R. §2.72(a)(1).  In addition, the drawing of the mark can be amended only if the amendment does not materially alter the mark as originally filed.  37 C.F.R. §2.72(a)(2); see TMEP §§807.12(a), 807.14 et seq.

 

Therefore, applicant must submit one of the following:

 

(1)  A new color drawing of the mark that agrees with the colors of the mark on the specimen and does not materially alter the original mark.  See 37 C.F.R. §2.72(a)(2); TMEP §§807.07(d)(i), 807.12(a), 807.14 et seq.  Amending the drawing to agree with the specimen would not be considered a material alteration of the mark in this case.  However, applicant must also provide a statement listing all the colors that are claimed as a feature of the mark and a statement describing the literal and design elements of the mark that specifies where all the colors appear in those elements.  See 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §807.07(d)(i).  If black, white and/or gray are not being claimed as a color feature of the mark, applicant must state that the colors black, white and/or gray represent background, outlining, shading and/or transparent areas and are not part of the mark.  TMEP §807.07(d).  Generic color names must be used in the color claim and mark description, e.g., magenta, yellow, turquoise.  TMEP §807.07(a)(i)-(a)(ii).;

 

(2)  A new black and white drawing of the mark, with a statement authorizing the deletion of any color claim or color description.  Deleting color, however, must not materially alter the original mark.  See TMEP §807.07(a)(i), (d)(i).  Amending the drawing to delete color would not be considered a material alteration of the mark in this case.; or

 

(3)  A substitute specimen showing use in commerce of the mark in the colors depicted on the drawing, and 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 at least as early as the filing date of the application.”  See 37 C.F.R. §§2.59(a), 2.193(e)(1); TMEP §§807.07(d)(i), 904.02(c)(ii).  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.

 

If applicant cannot satisfy one of the above requirements, applicant may amend the application from a use in commerce basis under Trademark Act Section 1(a) to an intent to use basis under Section 1(b), for which no specimen is required.  See TMEP §806.03(c).  However, if applicant amends the basis to Section 1(b), registration will not be granted until applicant later amends the application back to use in commerce by filing an acceptable allegation of use with a proper specimen.  See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103.

 

To amend to Section 1(b), applicant must submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “Applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods and/or services listed in the application as of the filing date of the application.”  37 C.F.R. §2.34(a)(2); TMEP §806.01(b); see 15 U.S.C. §1051(b); 37 C.F.R. §§2.35(b)(1), 2.193(e)(1).

 

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 and/or service mark.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).

 

SPECIAL FORM REQUIREMENTS 

Special form drawings submitted electronically via the Trademark Electronic Application System (TEAS) must be attached as a digitized image file.  The requirements for an electronically submitted special form drawing are as follows:

 

(1)  The mark should appear in black on a white background, unless the mark is in color.  If color is a feature of the mark, applicant must depict the mark in color, and provide both a statement identifying the colors claimed and a statement describing where the colors appear in the mark.;

 

(2)  All lines in the image must be clean, sharp and solid, and not fine or crowded, and produce a high-quality image when copied.; and

 

(3)  The digitized mark image must be in jpg format, formatted at no less than 300 dots per inch and no more than 350 dots per inch.

 

37 C.F.R. §§2.52(b), (b)(1), 2.53(b)-(c); TMEP §§807.04(a), 807.05(b)-(c), 807.07(a)(i)-(a)(ii).

 

In addition to the above, the Office recommends that the digitized image of the mark have a length and width of no smaller than 250 pixels and no larger than 944 pixels.

 

 

COLOR LOCATION DESCRIPTION INCOMPLETE

The mark description is incomplete because it does not reference it does not reference all the colors in the literal elements of the mark.  A complete mark description for a mark depicted in color must identify all the literal and design elements in the mark and specify where the colors appear in those elements.  See 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §§807.07(a) et seq.  If black, white, and/or gray are not being claimed as a color feature of the mark, applicant must exclude these 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.  TMEP §807.07(d). 

 

Based on the foregoing requirements for a complete mark description, applicant must provide a description of the mark that identifies all the literal and design elements and specifies where the colors appear in those elements.  See 37 C.F.R. §2.52(b)(1); TMEP §§807.07(a) et seq. 

 

The following description is suggested, if accurate:  “The mark consists of the following:  a blue oval with black and white outlines, a blue banner beneath the oval outlined in black with three yellow stars each of which is outlined in black, and within the oval the stylized white letters IAI.”

 

SEARCH OF OFFICE’S DATABASE OF MARKS

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).

 

 

 

 

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.

 

 

 

 

John Kelly /jmck/

Trademark Attorney

Law Office 117

571.272.9412

Fax: 571.273-9117 (official responses only)

 

 

 

TO RESPOND TO THIS LETTER:  Use the Trademark Electronic Application System (TEAS) response form at http://teasroa.gov.uspto.report/roa/.  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.

 

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.

 

 

 

 

 

IMPORTANT NOTICE REGARDING YOUR TRADEMARK APPLICATION

Your trademark application (Serial No. 85052352) has been reviewed.   The examining attorney assigned by the United States Patent and Trademark Office (“USPTO”) has written a letter (an “Office Action”) on 9/14/2010 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 9/14/2010 (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:

 

John Kelly /jmck/

Trademark Attorney

Law Office 117

571.272.9412

Fax: 571.273-9117 (official responses only)

 

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.