To: | JOHAN SCHOUTEN BEHEER B.V. (RL@EverythingTrademarks.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 85217933 - CALIBER - N/A |
Sent: | 2/2/2016 7:04:27 PM |
Sent As: | ECOM114@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 85217933
MARK: CALIBER
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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: JOHAN SCHOUTEN BEHEER B.V.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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: 2/2/2016
THIS IS A FINAL ACTION.
TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $50 per international class of goods and/or services. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone without incurring this additional fee.
This Office action is in response to applicant’s communication filed on January 25, 2016.
In a previous Office action(s) dated January 25, 2016, applicant was required to satisfy the following requirement(s): FOREIGN REGISTRATION and PARTICULAR GOODS EXCEED SCOPE OF FOREIGN REGISTRATION.
Based on applicant’s response, the trademark examining attorney notes that the following requirement(s) have been satisfied: PARTICULAR GOODS EXCEED SCOPE OF FOREIGN REGISTRATION. See TMEP §§713.02, 714.04.
In addition, the examining attorney notes that applicant’s response maintained both the Section 1(b) basis and the Section 44(e) basis. In light of the fact that applicant petitioned to add the Section 44(e) basis on October 15, 2015, and previously requested deletion of the Section 1(b) basis if, and only if, the Section 44(e) basis was acceptable, applicant may wish to delete the Section 1(b) basis when filing applicant’s response.
The examining attorney notes that applicant has provided a signed English translation of the foreign registration in connection with applicant’s response filed on January 25, 2016. However, applicant has not provided an appropriate copy of the foreign registration. In particular, the copy of the foreign registration submitted on October 14, 2015 is not acceptable as noted below and as noted in the Office action dated November 19, 2015.
Further, the trademark examining attorney maintains and now makes FINAL the refusal(s) and/or requirement(s) in the summary of issues below. See 37 C.F.R. §2.63(b); TMEP §714.04.
SUMMARY OF ISSUES MADE FINAL that applicant must address:
FOREIGN REGISTRATION
The requirement for the foreign registration is now made FINAL. See 37 C.F.R. §2.63(b).
On October 14, 2015, applicant submitted a photocopy of an entry in the intellectual property office’s gazette or a printout from an intellectual property office’s website to satisfy the statutory requirement under Trademark Act Section 44(e) for a true copy, photocopy, certification, or certified copy of a foreign registration from the applicant’s country of origin. 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01. However, the submitted document was not accompanied by a certification from the issuing intellectual property office. A photocopy of an intellectual property office’s publication or a printout from an intellectual property office’s website is sufficient to satisfy the statutory requirement only if it is accompanied by a certification from the issuing office. TMEP §1004.01.
An acceptable “copy” is a document that has been issued to applicant by, or certified by, the intellectual property office in applicant’s country of origin. TMEP §1004.01. If applicant’s country of origin does not issue registrations or certificates of extension of protection, applicant may submit a copy of the international registration that shows that protection of the international registration has been extended to applicant’s country of origin. TMEP §1016.
Therefore, to perfect the Section 44(e) basis, applicant must submit an acceptable true copy, photocopy, certification, or certified copy of a foreign registration issued to applicant by, or certified by, the intellectual property office in applicant’s country of origin. See 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01.
If the foreign certificate of registration is not written in English, applicant must also provide an English translation. 37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b). The translation should be signed by the translator. TMEP §1004.01(b). With respect to the English translation, the submitted translation on October 14, 2015 and January 25, 2016 are acceptable.
Thus, the requirement for the foreign registration is not made FINAL.
RESPONSE TO THIS ACTION
(1) A response that fully satisfies all outstanding requirements and/or resolves all outstanding refusals.
(2) An appeal to the Trademark Trial and Appeal Board, with the appeal fee of $100 per class.
37 C.F.R. §2.63(b)(1)-(2); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.
In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues. TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters). The petition fee is $100. 37 C.F.R. §2.6(a)(15).
/Brendan McCauley/
Brendan McCauley
Law Office 114
571-272-9459
Brendan.McCauley@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.