UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

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

 

 

 

PRIORITY 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: 12/30/2011

 

 

DATABASE SEARCH:  The trademark examining attorney has searched the USPTO’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).

 

ISSUES APPLICANT MUST ADDRESS:  On December 28, 2011, the trademark examining attorney and N. Hattersley discussed the issues below.  Applicant must timely respond to these issues.  See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §§708, 711.

 

 

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.

 

SPECIMEN AND DRAWING DO NOT MATCH

 

The mark on the specimen disagrees with the mark on the drawing.  In this case, the specimen displays the mark as CHELSEA SQUARE in white against a brown background and brown design; and the drawing shows the mark as CHELSEA SQUARE and design in the color brown.

 

An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each class of goods and/or services.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).  The mark on the drawing must be a substantially exact representation of the mark on the specimen.  37 C.F.R. §2.51(a); TMEP §807.12(a); see 37 C.F.R. §2.72(a)(1).  In addition, the drawing of the mark can be amended only if the amendment does not materially alter the mark as originally filed.  37 C.F.R. §2.72(a)(2); see TMEP §§807.12(a), 807.14 et seq.

 

Therefore, applicant must submit one of the following:

 

(1)  A new drawing of the mark that agrees with the mark on the specimen but does not materially alter the original mark.  See 37 C.F.R. §2.72(a)(2); TMEP §§807.12(a), 807.14 et seq.  Amending the drawing to agree with the specimen would not be considered a material alteration of the mark in this case.

 

(2)  A substitute specimen showing use in commerce of the mark on the drawing, and the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “The substitute specimen was in use in commerce at least as early as the filing date of the application.”  See 37 C.F.R. §§2.59(a), 2.193(e)(1); TMEP §§807.12(a), 904.05.  If submitting a specimen requires an amendment to the dates of use, applicant must also verify the amended dates.  37 C.F.R. §2.71(c); TMEP §904.05.

 

Submitting a Substitute Specimen via TEAS

 

To submit a verified substitute specimen online via the Trademark Electronic Application System (TEAS), applicant should do the following:  (1) answer “yes” to the TEAS response form wizard question to “submit a new or substitute specimen;” (2) attach a jpg or pdf file of the substitute specimen; (3) select the statement that “The substitute specimen(s) was in use in commerce at least as early as the filing date of the application.”; and (4) sign personally or enter personally his/her electronic signature, name in printed or typed form, and date after the declaration at the end of the TEAS response form.  See 37 C.F.R. §§2.59(a), 2.193(a), (c)-(d), (e)(1); TMEP §§611.01(c), 804.01(b).  Please note that these steps appear on different pages of the TEAS response form. 

 

If applicant experiences difficulty in submitting the required substitute specimen, supporting statement and/or declaration, please e-mail mailto:TEAS@uspto.gov for technical assistance regarding the TEAS response form.

 

 

Pending receipt of a proper response, registration is refused because the specimen does not show the applied-for mark in use in commerce as a trademark and/or service mark.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).

 

If Applicant Amends Color Drawing to Match the Specimen

 

If the applicant submits a color drawing that matches the specimen, the applicant must amend the color claim and color location statements.  Applications for marks depicted in color must include a complete list of all the colors claimed as a feature of the mark and a mark description of the literal and design elements that specifies where all the colors appear in those elements.  37 C.F.R. §§2.37, 2.52(b)(1); see TMEP §§807.07(a) et seq.  

 

If black, white and/or gray are not being claimed as a color feature of the mark, applicant must state that the colors black, white and/or gray represent background, outlining, shading and/or transparent areas and are not part of the mark.  TMEP §807.07(d).  Generic color names must be used in the color claim and mark description, e.g., magenta, yellow, turquoise.  TMEP §807.07(a)(i)-(a)(ii).

 

Therefore, applicant must provide a color claim and a mark description specifying where all the colors appear in the mark.  The following color claim and mark description are suggested, if accurate:

 

Color claim:  “The colors brown and white are claimed as a feature of the mark.”; and

 

Mark description:  “The mark consists of the following:  the stylized wording "CHELSEA SQUARE" in white.  Between the wording, in brown, is a horizontal line with the design of an infinity symbol in the middle.  The entire mark is against a brown background.” 

 

If Applicant Amends Drawing to Delete Color Claim

 

If the applicant amends the drawing to delete a color claim, the applicant must amend the color claim and description of the mark.

 

Applicant must submit an accurate and concise description of the literal and design elements in the mark.  37 C.F.R. §2.37; see TMEP §§808.01, 808.02.  The following is suggested, if accurate:

 

Color is not claimed as a feature of the mark.  The mark consists of the stylized wording "CHELSEA" above a horizontal line with the infinity symbol in the middle.  Below the line is the stylized wording "SQUARE".

 

Drawing Requirements

 

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).

 

RESPONSE

 

For this application to proceed toward registration, applicant must explicitly address each refusal and/or requirement raised in this Office action.  If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register.  Applicant may also have other options for responding to a refusal and should consider such options carefully.  To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements. 

 

In addition, applicant filed a TEAS Plus application and therefore must respond online using the Trademark Electronic Application System (TEAS) at http://www.gov.uspto.report/teas/index.htm to avoid incurring an additional fee.  See 37 C.F.R. §2.23(a)(1), (b). 

 

If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end, the trademark will fail to register, and the application fee will not be refunded.  See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a), 2.209(a); TMEP §§405.04, 718.01, 718.02.  Where the application has been abandoned for failure to respond to an Office action, applicant’s only option would be to file a timely petition to revive the application, which, if granted, would allow the application to return to live status.  See 37 C.F.R. §2.66; TMEP §1714.   There is a $100 fee for such petitions.  See 37 C.F.R. §§2.6, 2.66(b)(1).

 

 

 

/Kim Saito/

Examining Attorney, Law Office 102

571-272-9214

kim.saito@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. 85456170) has been reviewed.   The examining attorney assigned by the United States Patent and Trademark Office (“USPTO”) has written a letter (an “Office Action”) on 12/30/2011 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 12/30/2011 (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:

 

/Kim Saito/

Examining Attorney, Law Office 102

571-272-9214

kim.saito@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.