Offc Action Outgoing

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:

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

No Conflicting Marks Found

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).

Copy of Jamaican Application Required

TMEP §1003 asserts that a claim of priority under Section 44(d) of the Trademark Act, 15 U.S.C. §1126(d), is acceptable if the following requirements are met:

(1) The eligible applicant must file a claim of priority within six months of the filing date of the first-filed foreign application. 15 U.S.C. §1126(d)(1); 37 C.F.R. §§2.34(a)(4)(i) and 2.35(b)(5); TMEP §§1003.01 and 1003.02.

(2) The applicant must: (a) specify the filing date and country of the first regularly filed foreign application; or (b) state that the application is based upon a subsequent regularly filed application in the same foreign country, and that any prior-filed application has been withdrawn, abandoned, or otherwise disposed of, without having been laid open to public inspection and without having any rights outstanding, and has not served as a basis for claiming a right of priority. 15 U.S.C. §1126(d); 37 C.F.R. §§2.34(a)(4)(i)(A) and (B).

(3) The applicant must verify that the applicant has a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application. 15 U.S.C. §1126(d)(2). If the verified statement is not filed with the initial application, the verified statement must also allege that the applicant has had a bona fide intention to use the mark in commerce since the filing date of the application. 37 C.F.R. §2.34(a)(4)(ii).

(4) Both the non-United States applicant’s country of origin and the country where the foreign application is filed must be a party to an international treaty or agreement with the United States that provides a right of priority, or must extend reciprocal rights to priority to United States nationals. 15 U.S.C. §1126(b) and (d); TMEP §§1002.02, 1002.03 and 1002.04.

(5) The scope of the goods covered by the §44 basis cannot exceed the scope of the goods or services in the foreign application. 37 C.F.R. §2.32(a)(6); TMEP §1402.01(b).

(6) The applicant must specify the serial number of the foreign application. 37 C.F.R. §2.34(a)(4)(i)(A); Paris Convention Article 4(D)(5).

To verify the above required information, a copy of the Jamaican Application No. 56629 is hereby required.

Section 44(d) Claim of Priority and Section 1(b) Filing Basis

Applicant stated the following in the application:

“At this time, the applicant does NOT intend to rely on Section 44(e) as a basis for registration, but wishes only to assert a valid claim of priority.”

The application specifies both a basis under Trademark Act Section 1 and a claim of priority under Section 44(d) based on a foreign application. See 15 U.S.C. §§1051(a)-(b), 1126(d); 37 C.F.R. §2.34(a)(1)-(2), (a)(4).

For your information - To obtain registration under Section 44(e) based on a foreign registration that will issue from a foreign application relied on for priority, an applicant must establish that the country in which the foreign application was filed is its country of origin. See 15 U.S.C. §1126(c); TMEP §§1002.01, 1002.02, 1002.04. However, it is unclear as to whether the foreign registration will issue from applicant’s country of origin because, although the application specifies that applicant is domiciled in the United States, the foreign application was filed in Jamaica. When applicant submits the foreign registration, applicant will be required to establish that the country where the foreign application was filed is its country of origin by providing a written statement that applicant has a bona fide and effective industrial or commercial establishment in Jamaica. See TMEP §§1002.01, 1002.02, 1002.04.

When the application is in condition for publication, applicant may retain the priority filing date without perfecting the Section 44(e) basis, as long as the Section 1(b) filing basis remains valid basis for registration. See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.04(b).

Although the mark may be approved for publication on the Section 1(b) basis, it will not register until an acceptable allegation of use has been filed. See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103.

ADVISORY – Persons Who Can Sign Responses

Responses to Office actions must be properly signed. See 37 C.F.R. §§2.62(b), 2.193(e)(2); TMEP §§712, 712.01. Where an applicant is represented by an attorney, the attorney must sign the response. 37 C.F.R. §2.193(e)(2)(i); TMEP §§611.03(b), 712.01. The only attorneys who may sign responses and otherwise practice before the USPTO in trademark matters are (1) attorneys in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and other federal territories and possessions of the United States; and (2) Canadian agents/attorneys who represent applicants located in Canada and (a) are registered with the USPTO and in good standing as patent agents or (b) have been granted reciprocal recognition by the USPTO. See 37 C.F.R. §§2.17(e), 2.62(b), 11.1, 11.5(b)(2), 11.14(a), (c); TMEP §§602, 712.01. Attorneys who fail to meet these requirements, as well as non-attorneys, are generally not permitted to represent applicants in trademark matters before the USPTO; and thus, they may not sign responses. See 5 U.S.C. §500(b), (d); 37 C.F.R. §11.14(a)-(c), (e); TMEP §§602, 602.02, 608.01.

Where an applicant is represented by an attorney, and then later retains a different attorney from a different firm, the newly retained attorney may not sign responses until applicant files a new power and/or revocation of attorney. See 37 C.F.R. §2.18(a)(7); TMEP §604.03.

Where an applicant is not represented by an attorney, the response must be signed by the individual applicant or someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner). See 37 C.F.R. §2.193(e)(2)(ii); TMEP §§611.03(b), 611.06 et seq., 712.01. In the case of joint applicants, all must sign. 37 C.F.R. §2.193(e)(2)(ii); TMEP §611.06(a).

/Laura Gorman Kovalsky/

Trademark Attorney, Law Office 110

571.272.9182 phone laura.kovalsky@uspto.gov

(Telephone and e--mail inquiries are

welcome; however, responses are not

accepted via e-mail)

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.