UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

FINAL 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: 4/17/2012

 

THIS IS A FINAL ACTION.

 

 

 

 

 

 

 

This Office action is in response to applicant’s communication filed on March 20, 2012.

 

 

STATUS

 

In a first Office action dated August 3, 2011, the examining attorney required the applicant to address informalities.

 

Applicant filed a response on January 24, 2012, that appears to have been improperly signed by a person with no legal authority to bind or represent applicant.  See 37 C.F.R. §§2.62(b), 2.193(e)(2). 

 

In a second Office action dated March 4, 2012, the examining attorney required that the applicant resubmit the entire response, signed by a proper party, or provide an explanation of the signer’s legal authority to bind or represent applicant, as explained more fully below.  See 37 C.F.R. §§2.17(b)(2), 2.62(b), 2.193(e)(2).  The examining attorney indicated that if submitting a newly signed response, applicant must also explicitly address and respond to all the issues raised in the outstanding Office action dated August 3, 2011.  See 37 C.F.R. §2.65(a); TMEP §718.03.

 

In the communication filed on March 20, 2012, the applicant submitted only of the signature of an authorized party.  Consequently, the examining attorney must repeat and make final the requirements specified in the first Office action.

 

 

REASONING FOR FINAL REFUSAL

 

Delete Registration Symbol from Drawing

 

Applicant must submit a new drawing with the registration notice ® deleted.  See TMEP §807.14(a).  This is not considered part of the mark and is not registrable matter.  See id.  Although deleting this unregistrable matter from the drawing of the mark is acceptable, changing or modifying the mark in other ways is only acceptable if such changes do not materially alter the mark depicted in the original drawing.  See 37 C.F.R. §2.72(a)(2); TMEP §807.14.

 

The new drawing must show a clear depiction of the mark that will produce a high-quality image when copied; all lines must be clean, sharp and solid, not fine or crowded.  See 37 C.F.R. §§2.52, 2.53(c), 2.54(e).  The mark should appear in black on a white background unless the color is a feature of the mark, in which case the mark should be depicted in color on a white background.  37 C.F.R. §§2.52(b), (b)(1), 2.54(d).

 

For drawings submitted online via the Trademark Electronic Application System (TEAS), the image must be in jpg format.  37 C.F.R. §2.53(c).  Please review the instructions in the TEAS online response to Office action form for more information about electronic drawing submissions. 

 

 

Color Claim Appears Unnecessary

 

The drawing shows the applied-for mark in black and white; however, the application includes a color claim and specifies various colors.  Specifically, the color claim states the following:  "The color(s) black, white, red, blue, green, gold, orange, silver is/are claimed as a feature of the mark." 

 

A registration for a mark that is black and white/gray and does not include a color claim is not limited to any particular color scheme and thus the registration would cover depictions of the mark in all possible color combinations.  See In re Data Packaging Corp., 453 F.2d 1300, 1302, 172 USPQ 396, 397 (C.C.P.A. 1972); TMEP §807.14(e)(1). 

 

Therefore, applicant must satisfy one of the following:

 

Submit a statement authorizing deletion of any color claim.  A registration for a mark that does not include a color claim is not limited to any particular color scheme and thus the registration would cover depictions of the mark in all possible color combinations.  See In re Data Packaging Corp., 453 F.2d 1300, 1302, 172 USPQ 396, 397 (C.C.P.A. 1972); TMEP §807.14(e)(1). 

 

 

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).

 

 

/Rudy R. Singleton/

United States Patent and Trademark Office

Trademark Examining Attorney

Law Office 102

(571) 272-9262

rudy.singleton@uspto

 

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. 85299504) has been reviewed.   The examining attorney assigned by the United States Patent and Trademark Office (“USPTO”) has written a letter (an “Office Action”) on 4/17/2012 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 4/17/2012 (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:

 

/Rudy R. Singleton/

United States Patent and Trademark Office

Trademark Examining Attorney

Law Office 102

(571) 272-9262

rudy.singleton@uspto

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.