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: 4/21/2011

 

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.

 

Search Results

 

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).

 

Substitute Black and White Drawing or Color Claim and Description Required

 

Applicant submitted a drawing showing the mark in color (specifically, the background of the mark is blue) but appears to have identified the mark as non-color in the application form and has not provided a color claim or mark description referencing color.  37 C.F.R. §2.52(b)(1); TMEP §807.07(b).  Applications for marks depicted in color must include a complete list of all the colors claimed as a feature of the mark and a description of the literal and design elements that specifies where the colors appear in those elements.  37 C.F.R. §§2.37, 2.52(b)(1); see TMEP §§807.07(a) et seq. 

 

Therefore, applicant must clarify whether color is claimed as a feature of the mark by satisfying one of the following:

 

(1)  If color is not a feature of the proposed mark, applicant must submit a substitute black and white drawing of the mark to replace the color drawing of record.  Amendments or changes to the mark will not be accepted if the changes would materially alter the mark.  37 C.F.R. §2.72(a)(2); TMEP §807.14.  However, amending the drawing to delete color would not be considered a material alteration of the mark in this case.; or 

 

(2)  If color is a feature of the proposed mark, applicant must submit a statement listing all of the colors claimed as a feature of the mark and a statement describing the literal and design elements in the mark that specifies where the colors appear in those elements.  See 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §§807.07(a) et seq.  The following format is suggested:  “The colors blue and black are claimed as a feature of the mark.  The mark consists of the following:  three linked stick figures with hearts between them and plants in the hearts and the wording “GROW APPALACHIA”, all in black and on a blue rectangle background.”

 

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.

 

Comments

 

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.

 

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §2.191; TMEP §§709.04-.05. 

 

/April Roach/

Trademark Examining Attorney

Law Office 115

(571) 272-1092

april.roach@uspto.gov

 

TO RESPOND TO THIS LETTER:  Go to http://www.uspto.gov/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.uspto.gov/.  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.uspto.gov/trademarks/process/status/.

 

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.uspto.gov/teas/eTEASpageE.htm.