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: 11/24/2010

 

 

Applicant’s Correspondence

This action responds to applicant’s correspondence filed November 2, 2010.  Applicant submitted an amended drawing, which is not accepted for the reason set forth below.  The refusal because the drawing of the mark in the U.S. application does not correspond with the mark shown in the foreign registration is maintained and continued.  Applicant also submitted a substitute specimen, which is accepted and has been made of record.  The amended identification submitted by applicant is unacceptable in part.  The Section 2(d) refusal is withdrawn, as is the refusal because applicant is not the owner of the mark under Section 44(e).  Applicant did not respond to the requirement for the fee for the loss of TEAS Plus status, and the requirement for the fee is maintained and continued.

 

Summary of Issues Applicant Must Address

(1)    Substitute drawing is a material alteration

(2)    Mark on drawing does not agree with mark on foreign registration

(3)    Amended identification is unacceptable in part

(4)    $50 fee due for loss of TEAS Plus status

 

 

Drawing Amendment Not Accepted – Material Alteration – New Issue

Applicant has requested that the drawing of the mark be amended.  The original drawing shows the mark as the word ARIEL in standard characters; the amended drawing shows the mark as ARIEL in stylized font with a stylized letter “A” in a circle above the word.   

 

An amendment to a mark will not be accepted if the change would materially alter the mark in the initial application.  37 C.F.R. §2.72; In re Who? Vision Sys., Inc., 57 USPQ2d 1211 (TTAB 2000) (holding proposed amendment of TACILESENSE to TACTILESENSE to be material alteration); In re CTB Inc., 52 USPQ2d 1471 (TTAB 1999) (holding proposed amendment of TURBO and design to typed word TURBO to be material alteration); TMEP §807.14. 

 

For example, if republication of the amended mark would be necessary in order to provide proper notice of the mark to third parties for opposition purposes, then the mark has been materially altered and the amendment is not permitted.  In re Who? Vision Sys. Inc., 57 USPQ2d at 1218.  “The modified mark must contain what is the essence of the original mark, and the new form must create the impression of being essentially the same mark.”  In re Hacot-Columbier, 105 F.3d 616, 620, 41 USPQ2d 1523, 1526 (Fed. Cir. 1997) (quoting Visa Int’l Serv. Ass’n v. Life Code Sys., Inc., 220 USPQ 740, 743 (TTAB 1983)); see In re Nationwide Indus. Inc., 6 USPQ2d 1882, 1885 (TTAB 1988); TMEP §807.14.

 

The Office determines whether a proposed amendment materially alters a mark by comparing the proposed amended mark with the mark in the drawing filed with the original application.  TMEP §807.14(d). 

 

In the present case, the proposed amendment to the mark is refused because it would result in a material alteration of the mark depicted in the original application.  TMEP §807.17; see 37 C.F.R. §2.72.  Specifically, the proposed amendment would materially alter the mark in the initial application because it includes a stylized letter “A” that was not included in the original mark.

 

Accordingly, the proposed amendment will not be entered and thus, the previously acceptable drawing of the mark will remain operative.  TMEP §807.17.  Applicant must respond by arguing in favor of the proposed amendment and/or withdrawing the proposed amendment.  See TMEP §§714.03, 714.05(a), 807.17.

 

Mark Differs on Drawing and Foreign Registration – Material – Maintained and Continued

As the substitute drawing is not accepted, the drawing of the mark in the U.S. application is not acceptable because it does not correspond to the mark shown in the foreign registration.  See 15 U.S.C. §1126(e); 37 C.F.R. §2.51(c).  The drawing displays the mark as ARIEL in standard characters; the foreign registration shows the mark as ARIEL in stylized font below a stylized letter A in a circle.

 

The drawing of the mark in a U.S. application must be a substantially exact representation of the mark that appears in the foreign registration.  37 C.F.R. §2.51(c); In re Hacot-Colombier, 105 F.3d 616, 618-19, 41 USPQ2d 1523, 1525 (Fed. Cir. 1997); TMEP §§807.12(b), 1011.01; see United Rum Merchs. Ltd. v. Distillers Corp. (S.A.), 9 USPQ2d 1481, 1483-84 (TTAB 1988).  However, a mark in a U.S. application can be amended only if the change would not materially alter the mark.  37 C.F.R. §2.72(c); In re Wine Soc’y of Am. Inc., 12 USPQ2d 1139 (TTAB 1989); see TMEP §§807.14 et seq., 1011.03.

 

Applicant may not amend the drawing in the U.S. application to conform to the mark in the foreign registration because such an amendment would materially alter the essence or character of the mark in the U.S. application.  In other words, the commercial impression of the mark on the foreign registration is significantly different from that of the mark that appears on the drawing page.  See 37 C.F.R. §2.72(c); TMEP §§807.12(b), 807.14 et seq.

 

Applicant may respond by deleting the Trademark Act Section 44 basis from the application and proceeding solely on the Section 1 basis.  See 15 U.S.C. §§1051(a)-(b), 1126(d)-(e); 37 C.F.R. §2.35(b)(1); TMEP §806.04

 

This requirement is maintained and continued.

 

Amended Identification Exceeds Scope of Original Identification in Application – New Issue

The proposed amendment to the identification cannot be accepted because the following wording refers to goods that are not within the scope of the identification that was set forth in the application at the time of filing:  “components and accessories for passenger motor cars and motorcycles; components and accessories for motor cars and motorcycles for racing..”  See 37 C.F.R. §2.71(a).  This wording is beyond the scope of the original wording because no parts or accessories were included in the identification for motorcycles and motorcycles for racing.  And “components and accessories” is broader than the “structural parts, trim and badges” that was specified for “passenger automobiles” only. 

 

Identifications can be amended only to clarify or limit the goods, adding to or broadening the scope of the goods is not permitted.  Id.; see TMEP §§1402.06 et seq., 1402.07(a).  Therefore, this wording should be deleted from the identification.

 

Applicant may adopt the following identification, if accurate:

 

Passenger motor cars, motorcycles; motor cars and motorcycles for racing; structural parts, trim and badges for passenger automobiles.  International Class 12.

 

An applicant may amend an identification of goods and services only to clarify or limit the goods and services; adding to or broadening the scope of the goods and/or services is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07 et seq.

 

For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.  See TMEP §1402.04.

 

TEAS Plus Status Lost – Additional Fee Required – Maintained and Continued

Applicant must submit an additional application processing fee of $50 per class because the application as filed did not meet the TEAS Plus application filing requirements.  See 37 C.F.R. §§2.6(a)(1)(iv), 2.22(a), (b); TMEP §§819.01 et seq., 819.04.  Specifically, the following application filing requirement was not met:  one or more of the asserted filing bases do not satisfy the requirements of 37 C.F.R. §2.34.

 

The additional fee is required even if applicant later corrects these application requirements.

This requirement is maintained and continued.

 

 

Sara N. Benjamin

/Sara N. Benjamin/

Examining Attorney

Law Office 110

571.272.8847

 

 

 

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. 85052357) has been reviewed.   The examining attorney assigned by the United States Patent and Trademark Office (“USPTO”) has written a letter (an “Office Action”) on 11/24/2010 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 11/24/2010 (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:

 

Sara N. Benjamin

/Sara N. Benjamin/

Examining Attorney

Law Office 110

571.272.8847

 

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.