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: 1/13/2012

 

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.

 

SEARCH OF OFFICE’S DATABASE OF MARKS

 

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).

 

DRAWING REQUIRES AMENDMENT

 

Applicant must submit a new drawing showing the TM symbol deleted from the mark; this matter is not part of the mark and is not registrable.  See TMEP §807.14(a). 

 

A special form drawing must show the mark (1) in black on a white background, if color is not a feature of the mark, or (2) in color on a white background, if color is a feature of the mark.  37 C.F.R. §2.52(b); see TMEP §§807.04, 807.07(a).  In addition, the mark must be shown clearly so as to produce a high quality image when copied; all lines in the drawing must be clean, sharp, solid, and not fine or crowded.  See 37 C.F.R. §§2.52, 2.53(c), 2.54(e); TMEP §807.04(a). 

 

To submit a new drawing via the Trademark Electronic Application System (TEAS), applicant must use the response form and follow the instructions regarding submission of a drawing.  TMEP §807.05(a); see 37 C.F.R. §2.53(a).  An applicant must submit a drawing via TEAS in jpg format, and the USPTO recommends a digitized image with a length and width no smaller than 250 pixels and no larger than 944 pixels.  37 C.F.R. §2.53(c); TMEP §807.05(c).

 

For drawings submitted on paper, the paper should be approximately 8.5 inches wide by 11 inches long, white, non-shiny, and include the caption “DRAWING PAGE” at the top.  37 C.F.R. §2.54(a)-(c); TMEP §807.06(a).  The mark in the drawing must appear no larger than 3.15 inches (8 cm) high by 3.15 inches (8 cm) wide.  37 C.F.R. §2.54(b); TMEP §807.06(a).  Further, the drawing must be made with ink or by a process that will provide a high definition when scanned.  37 C.F.R. §2.54(e); TMEP §807.06(a).  A photolithographic, printer’s proof copy, or other high-quality reproduction of the mark may be used.  37 C.F.R. §2.54(e); TMEP §807.06(a). 

 

AMENDED DESCRIPTION OF MARK REQUIRED

 

The description of the mark uses superfluous language that is unnecessary.  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 must provide a more detailed description of the applied-for mark.  The following is suggested:

 

The mark consists of the word BENCHMARK with a stylized letter “A” and with BENCH in blue and MARK in green.

 

Applicant must provide a color claim as to all the colors appear in the mark.  The following color claim is suggested, if accurate:

 

Color claim:  “The colors blue and green.

 

SECTION 2(f) ACQUIRED DISTINCTIVENESS CLAIM SHOULD BE “WITHDRAWN”

 

Applicant claims that the applied-for mark has acquired distinctiveness under Trademark Act Section 2(f); however, this claim is unnecessary because the mark appears to be inherently distinctive and is eligible for registration on the Principal Register without proof of acquired distinctiveness.  See 15 U.S.C. §1052(f); TMEP §1212.02(d). 

 

Applicant may request to withdraw the claim of acquired distinctiveness by instructing the trademark examining attorney to delete it from the application record.  See TMEP §1212.02(d).  If applicant does not withdraw the claim, it will remain in the application record and be printed on the registration certificate.

 

A claim of acquired distinctiveness may be construed as a concession by applicant that the applied-for mark is not inherently distinctive.  In re Reed Elsevier Prop. Inc., 77 USPQ2d 1649, 1652 n.3 (TTAB 2005), aff'd, 482 F.3d 1376, 82 USPQ2d 1378 (Fed. Cir. 2007); see TMEP §1212.02(b).

 

The USPTO applies the following legal authorities when processing a trademark and service mark application: 

 

• The Trademark Act of 1946
• The Trademark Rules of Practice
• Precedential court and Trademark Trial and Appeal Board decisions
• USPTO’s Trademark Manual of Examining Procedure (TMEP) (8th ed. Oct. 2011)
• USPTO’s Trademark Trial and Appeal Board Manual of Procedure (TBMP) (3d ed. May 2011) 

 

15 U.S.C. §§1051 et seq.; 37 C.F.R. pts. 2, 3, 6, 7, 10, 11; see TMEP intro., §§101, 107, 110. 

 

Official USPTO letters and notices sent to applicants generally refer to one or more of these legal resources.  Both the Trademark Act and the Trademark Rules of Practice can be viewed online at the Trademarks’ Home Page at http://www.gov.uspto.report/trademarks/index.jsp by clicking on “Laws & Regulations” on the left side of the screen.  The TMEP is also available via the Home Page by clicking on “Manuals, Guides, Official Gazette” on the left side of the screen.  Trademark Trial and Appeal Board decisions and the TBMP can be found at their website located at http://www.gov.uspto.report/trademarks/process/appeal/index.jsp.

 

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.

 

 

/Edward Nelson/

Trademark Attorney

Law Office 106

(571) 272-9202

Edward.Nelson@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 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. 85430376) has been reviewed.   The examining attorney assigned by the United States Patent and Trademark Office (“USPTO”) has written a letter (an “Office Action”) on 1/13/2012 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 1/13/2012 (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:

 

/Edward Nelson/

Trademark Attorney

Law Office 106

(571) 272-9202

Edward.Nelson@uspto.gov

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.