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: 12/7/2012

 

 

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.

 

The acronym “TMEP” used in official USPTO letters and notices refers to the USPTO’s Trademark Manual of Examining Procedure, a manual written by USPTO staff attorneys that explains the laws and procedures governing the trademark application, registration, and post-registration processes.  The USPTO updates the TMEP periodically to reflect changes in law, policy, and procedure and notes each new version by the month and year it issues.  The current version of the TMEP is available online at http://www.gov.uspto.report/trademarks/resources/index.jsp.

 

NO CONFLICTING MARK 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).

 

REQUIREMENTS

 

Before the application can be considered further, the following requirement(s) must be addressed.

 

ENGLISH TRANSLATION REQUIRED

 

Applicant must submit an English translation of all foreign wording in the mark.  37 C.F.R. §2.32(a)(9); see TMEP §809.  In the present case, the wording “SELECTA” requires translation.

 

The following translation statement is suggested: 

 

The English translation of “SELECTA” in the mark is “SELECTED”. 

 

TMEP §809.03.

 

See attached website excerpt from translate.google.com regarding the English translation of the term.

 

ENTITY CLARIFICATION NEEDED

 

The name of an individual person appears in the section of the application intended for the trademark owner’s name; however, the entity type is set forth as a corporation.  Applicant must clarify this inconsistency.  TMEP §803.02(a).

 

If applicant is an individual, applicant should request that the entity be amended to “individual” and must indicate his or her country of citizenship.  See 37 C.F.R. §2.32(a)(3)(i); TMEP §803.04.  Alternatively, if applicant is a corporation, applicant must provide the legal name of the corporation and U.S. state or foreign country of incorporation or organization.  See 37 C.F.R. §2.32(a)(2), (a)(3)(ii); TMEP §§803.02(c), 803.03(c). 

 

Note that if applicant is a corporation and the corporate name is “LORENZANA FOOD CORPORATION”, applicant may amend the name of the applicant to “LORENZANA FOOD CORPORATION”.

 

If, in response to the above request, applicant provides information indicating that it is not the owner of the mark, registration will be refused because the application was void as filed.  See 37 C.F.R. §2.71(d); TMEP §§803.06, 1201.02(b).  An application must be filed by the party who owns or is entitled to use the mark as of the application filing date.  TMEP §§1201, 1201.02(b).

 

If applicant’s name  and entity type as a corporation are both correct, applicant can respond to this request by confirming these facts.

 

SIGNED VERIFICATION REQUIRED

The application was filed online via the Trademark Electronic Application System (TEAS), and included a jpg or pdf image of a pen-and-ink signature.  However, the averments required under 37 C.F.R. §§2.33, 2.34 and the affidavit or declaration required under 37 C.F.R. §2.20 were omitted from the signature; thus, the application is not considered properly verified, which is an application requirement.  See 15 U.S.C. §1051(a); 37 C.F.R. §§2.33(a)-(b)(1), 2.34(a)(1)(i); TMEP §§804.01(b), 804.02.  Therefore, applicant must submit the statements specified further below in an affidavit or signed declaration under 37 C.F.R. §2.20.  See 15 U.S.C. §1051(a)(3); 37 C.F.R. §§2.33(a)-(b)(1), (c), 2.193(e)(1); TMEP §§804.02, 806.01(a).

 

If applicant responds to this Office action online via TEAS, applicant may satisfy this requirement by answering “yes” to the TEAS response form wizard question relating to submitting a “signed declaration,” and personally entering his/her electronic signature, name in printed or typed form, and date after the declaration at the end of the TEAS response form, or attaching a jpg or pdf file of a personally signed and dated declaration that includes the printed or typed name of the signatory and the statements specified further below.  See 37 C.F.R. §§2.33(a)-(b)(1), (c), 2.193(a), (c)-(d), (e)(1); TMEP §§611.01(c), 804.01(b). 

 

If applicant responds to this Office action on paper, via regular mail, applicant may satisfy this requirement by providing the following statements and declaration at the end of the response, personally signed by a person authorized under 37 C.F.R. §2.193(e)(1) and dated, with the printed or typed name of the signatory appearing immediately below the signature.  See 37 C.F.R. §§2.20, 2.33(a)-(b)(1), (c), 2.193(a), (d); TMEP §§611.01(b), 804.01(b).

 

STATEMENTS:  The undersigned is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered; the mark is in use in commerce and was in use in commerce on or in connection with the goods and/or services listed in the application as of the application filing date; the specimen shows the mark as used on or in connection with the goods or services listed in the application; the facts set forth in the application are true and accurate; and to the best of the undersigned’s knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive.

 

DECLARATION:  The undersigned being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements and the like may jeopardize the validity of the application or document or any registration resulting therefrom, declares that all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.

 

_____________________________

(Signature)

 

_____________________________

(Print or Type Name and Position)

 

_____________________________

(Date)

 

The following persons are properly authorized to sign a verification or declaration on behalf of an applicant:

 

(1)       A person with legal authority to bind the applicant (e.g., a corporate officer or general partner);

 

(2)       A person with firsthand knowledge of the facts and actual or implied authority to act on behalf of the applicant; or

 

(3)       An authorized attorney who has an actual written or verbal power of attorney or an implied power of attorney from the applicant.

 

37 C.F.R. §§2.33(a), 2.193(e)(1); TMEP §§611.03(a), 804.04; see 37 C.F.R. §§11.1, 11.14.

 

DESIGNATION OF DOMESTIC REPRESENTIVE OPTIONAL

 

Applicant is encouraged to designate a domestic representative upon whom notices or process may be served.  TMEP §610.  If applicant does not designate a domestic representative, any notice or process in proceedings affecting the mark may be served on the Director of the USPTO.  15 U.S.C. §§1051(e), 1141h(d); 37 C.F.R. §2.24(a)(1)-(2); see TMEP §610.

 

Applicant may file a designation of domestic representative form online using the Trademark Electronic Application System (TEAS) at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.  Alternatively, applicant may complete and submit the form set forth below to designate a domestic representative on paper via regular mail.

 

A designation of domestic representative must be personally signed or include an electronic signature personally entered by the individual applicant, someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner), or an authorized attorney.  37 C.F.R. §§2.24(a)(1)(ii), 2.193(a), (e)(8); TMEP §610.  In the case of joint applicants, all must sign.  37 C.F.R. §2.193(e)(8); TMEP §610.

 

DESIGNATION OF DOMESTIC REPRESENTATIVE

 

__________________________                             _____________________________

Identify the Mark                                                 U.S. Application Serial No.

 

__________________________                             _____________________________

Name of Applicant                                                Date of Signature

 

______________________________________________________________________

(Name of Domestic Representative)

 

whose postal address is ___________________________________________________

______________________________________________________________________

is hereby-designated applicant’s domestic representative upon whom notices or process in proceedings affecting the mark may be served.

 

____________________________

(Signature)

 

____________________________

(Print or Type Name and Position)

 

 

RESPONSE

 

Because of the legal technicalities and strict deadlines involved in the USPTO application process, applicant may wish to hire a private attorney specializing in trademark matters to represent applicant in this process and provide legal advice.  Although the undersigned trademark examining attorney is permitted to help an applicant understand the contents of an Office action as well as the application process in general, no USPTO attorney or staff is permitted to give an applicant legal advice or statements about an applicant’s legal rights.  TMEP §§705.02, 709.06. 

 

For attorney referral information, applicant may consult the American Bar Association’s Consumers’ Guide to Legal Help at http://www.abanet.org/legalservices/findlegalhelp/home.cfm, an attorney referral service of a state or local bar association, or a local telephone directory.  The USPTO may not assist an applicant in the selection of a private attorney.  37 C.F.R. §2.11.

 

In addition, foreign attorneys, other than authorized Canadian attorneys, are not permitted to represent applicants before the USPTO (e.g., file written communications, authorize an amendment to an application, or submit legal arguments in response to a requirement or refusal).  See 37 C.F.R. §§2.17(e), 11.14(c), (e); TMEP §602.03-.03(c). 

 

The only attorneys who may practice before the USPTO in trademark matters are as follows:

 

(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

 

(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(a), (e), 11.1, 11.14(a), (c); TMEP §602.

 

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. 

 

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).

 

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §2.191; TMEP §§304.01-.02, 709.04-.05. 

 

For technical assistance in responding to this office action through the online Trademark Electronic Application System (TEAS) response form (e.g., help filling out the form, attaching files or selecting the right field), please e-mail TEAS@uspto.gov.

 

 

 

/Douglas M. Lee/

Trademark Examining Attorney

Law Office 111

U.S. Patent and Trademark Office

571-272-9343

douglas.lee4@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.

 

 

 

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 12/7/2012 FOR U.S. APPLICATION SERIAL NO. 85697846

 

Your trademark application has been reviewed.  The trademark examining attorney assigned by the USPTO to your application has written an official letter to which you must respond.  Please follow these steps:

 

(1)  Read the LETTER by clicking on this link or going to http://tsdr.gov.uspto.report/, entering your U.S. application serial number, and clicking on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification. 

 

(2)  Respond within 6 months (or sooner if specified in the Office action), calculated from 12/7/2012, using the Trademark Electronic Application System (TEAS) response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. 

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions. 

 

(3)  Questions about the contents of the Office action itself should be directed to the trademark examining attorney who reviewed your application, identified below. 

 

/Douglas M. Lee/

Trademark Examining Attorney

Law Office 111

U.S. Patent and Trademark Office

571-272-9343

douglas.lee4@uspto.gov

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp. 

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.