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: 7/20/2011

 

THIS IS A FINAL ACTION.

 

This Office action is in response to applicant’s communication filed on 6/25/2011.

 

In the previous office action the following issues were raised.

 

(1) Requirement to claim of ownership of U.S. Registration No. 3793012.

(2)  Requirement to  specify whether the numeral “33” or number and letter combination “3E” have any significance in the eyewear industry or as applied to the goods described in the application. 

(3) Requirement for an accurate and concise amended description of the mark that identifies all literal elements as well as any design elements in the mark.. 

 

Applicant’s response has satisfied No. 1 above.

 

Applicant’s response has satisfied No. 2 above with respect to the numeral “33”.  However, insofar as applicant’s response has not addresses the number letter combination “3E”, as detailed below, the requirement related thereto is hereby continued and made FINAL.    See37 C.F.R. §2.64(a).  37 C.F.R. §2.61(b); TMEP §§808.01(a), 814.

In addition, Applicant’s response to No. 3 has above has been found to be unacceptable.  Accordingly, as detailed below, that requirement is hereby continued and made FINAL.    See37 C.F.R. §2.64(a).

 

FINAL REQUIREMENT: EXPLANATION OF MARK’S SIGNIFICANCE REQUIRED

Applicant was required to specify whether the number and letter combination “3E” has any significance in the eyewear industry or as applied to the goods described in the application.  See 37 C.F.R. §2.61(b); TMEP §§808.01(a), 814.

Failure to respond to a request for information is an additional ground for refusing registration.  See In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re DTI P’ship LLP, 67 USPQ2d 1699, 1701 (TTAB 2003); TMEP §814.

Insofar as applicant has failed to respond, this requirement is hereby continued and made FINAL.

Applicant should note the following additional ground for refusal.

 

FINAL REQUIREMENT FOR AMENDMENT OF INACCURATE DESCRIPTION OF MARK

The applicant originally described the mark as follows: “[t]he mark consists of a stylized number three followed by a stylized number three backwards, it can be multiple repeating of the mark sometimes.”

 

Applicant was advised that the description of the mark uses broad, vague language that does not accurately describe the applied-for mark.  Applications for marks not in standard characters must include an accurate and concise description that identifies all literal elements as well as any design elements in the mark.  See 37 C.F.R. §2.37; TMEP §808.02. 

 

Therefore, applicant was required to provide a more detailed description of the applied-for mark. 

The following was suggested:

 

The mark consists of a stylized number “3” next to a backwards stylized number “3”, in which each number is formed by a combination of two occurrences of the stylized letter “C”,  and the intersection of the numbers forms a diamond shaped space in the middle of the mark. 

In response, applicant has offered the following amended description:

“The mark consists of a stylized number.”

The amended description remains unacceptable because it fails to specify all literal elements and design elements in the mark.  In particular, the description fails to specify that the mark consists of a stylized numeral “3” formed by two occurrences of a stylized letter “C”, followed a backwards stylized numeral “3” formed by two backwards occurrences of a stylized letter “C”, and fails to identify that the intersection of the numbers forms a diamond shaped space in the middle of the mark.

Accordingly, this requirement is hereby continued and made FINAL.

 

RESPONSE TO FINAL OFFICE ACTION

If applicant does not respond within six months of the date of issuance of this final Office action, the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond to this final Office action by:

 

(1)  Submitting a response that fully satisfies all outstanding requirements, if feasible; and/or

 

(2)  Filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class.

 

37 C.F.R. §§2.6(a)(18), 2.64(a); TBMP ch. 1200; TMEP §714.04.

 

In certain rare circumstances, a petition to the Director may be filed pursuant to 37 C.F.R. §2.63(b)(2) to review a final Office action that is limited to procedural issues.  37 C.F.R. §2.64(a); 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).

 

 

 

 

 

 

John Kelly /jmck/

Examining Attorney

Law Office 117

571 272 9412

john.kelly@uspto.gov

(informal communications only)

 

 

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.

 

 

 

 

 

IMPORTANT NOTICE REGARDING YOUR TRADEMARK APPLICATION

Your trademark application (Serial No. 85272849) has been reviewed.   The examining attorney assigned by the United States Patent and Trademark Office (“USPTO”) has written a letter (an “Office Action”) on 7/20/2011 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 7/20/2011 (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:

 

John Kelly /jmck/

Examining Attorney

Law Office 117

571 272 9412

john.kelly@uspto.gov

(informal communications 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.