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: 12/24/2012

 

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.

 

REQUIREMENTS - SIGNIFICANCE

Applicant must specify whether “UVISION” and “U” have any meaning or significance in the software, construction, and landscaping fields and industries; whether "UVISION" and "U" have any meaning or significance as applied to the goods and/or services described in the application; and whether "UVISION" and "U" are a “term of art” within applicant’s industry.  See 37 C.F.R. §2.61(b); TMEP §814.

 

Failure to respond to requirements for information is an additional ground for refusing registration.  See In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re DTI P’ship LLP, 67 USPQ2d 1699, 1701 (TTAB 2003); TMEP §814.

 

REQUIREMENTS – IDENTIFICATION, CLASSIFICATION, SPECIMENS, FEES

In the identification in Class 9, the wording “textured and colored sample sheets of plastic and paper showing landscaping paver patterns, colors and textures” is must be clarified.  This wording is indefinite in the goods are not described with sufficient specificity and/or because it is too broad in that the goods may be classified in more than one class. It is not clear from applicant’s identification if these goods are printed matter.  If the goods are printed matter in the nature of wall covering sample books, the identification must specify that the goods are printed; applicant must add Class 16; and applicant must adopt Class 16 for theses goods.  Applicant must clarify the identification of goods to specify the common commercial or generic name for the goods.  If there is no common commercial or generic name, then applicant must describe the product and intended consumer as well as its main purpose and intended uses.  See TMEP §§1401.02, 1402.01, 1402.03. 

 

If accurate, applicant may amend the wording and classification of “textured and colored sample sheets of plastic and paper showing landscaping paver patterns, colors and textures” to the following:

 

Class 16

Textured and colored printed sample sheets of plastic and paper showing landscaping paver patterns, colors and textures

 

In Class 42, “landscape design services,” are classified incorrectly.  Applicant must amend the application to classify the services in International Class 44.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b).  Alternatively, in certain instances “landscape design services” may be classified in Class 42.  Specifically, if the services are amended to clarify that they are “Landscape architectural design” or “Landscape lighting design,” then the identification must be amended to specifically state that and Class 42 is the appropriate classification.  If applicant amends the identification to specify services in two classes, then applicant must pay filing fees for an additional class, or delete one class from the application.

 

An applicant may amend an identification of goods and services only to clarify or limit the goods and services; adding to or broadening the scope of the goods and/or services is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07 et seq. Applicant must adopt the appropriate international classification number for the goods and/or services identified in the application.  The United States follows the International Classification of Goods and Services for the Purposes of the Registration of Marks, established by the World Intellectual Property Organization, to classify goods and services.  37 C.F.R. §2.85(a); TMEP §§1401.02, 1401.02(a).

 

For assistance with identifying and classifying goods and/or services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual at http://tess2.gov.uspto.report/netahtml/tidm.html.  See TMEP §1402.04.

 

For an application with more than one international class, called a “multiple-class application,” an applicant must meet all the requirements below for those international classes based on an intent to use the mark in commerce under Trademark Act Section 1(b) and a foreign registration under Section 44(e):

 

(1)       LIST GOODS AND/OR SERVICES BY INTERNATIONAL CLASS:  Applicant must list the goods and/or services by international class.

 

(2)       PROVIDE FEES FOR ALL INTERNATIONAL CLASSES:  Applicant must submit an application filing fee for each international class of goods and/or services not covered by the fee(s) already paid (confirm current fee information at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp).

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

For an application with more than one international class, called a “multiple-class application,” an applicant must meet all the requirements below for those international classes based on use in commerce:

 

(1)       LIST GOODS AND/OR SERVICES BY INTERNATIONAL CLASS:  Applicant must list the goods/services by international class.

 

(2)       PROVIDE FEES FOR ALL INTERNATIONAL CLASSES:  Applicant must submit an application filing fee for each international class of goods and/or services not covered by the fee(s) already paid, and the $100 per class fee for the amendment to allege use (confirm current fee information at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp).

 

(3)       SUBMIT REQUIRED STATEMENTS AND EVIDENCE:  For each additional international class of goods and/or services, applicant must submit:

 

(a)       DATES OF USE:  Dates of first use of the mark anywhere and dates of first use of the mark in commerce, or a statement that the dates of use in the initial application apply to that class.  The dates of use, both anywhere and in commerce, must be at least as early as the filing date of the amendment to allege use.

 

(b)       SPECIMEN:  One specimen showing the mark in use in commerce for each class of goods and/or services.  The specimen must have been in use in commerce prior to the filing of the amendment to allege use.  If a single specimen supports multiple classes, applicant should indicate which classes the specimen supports rather than providing multiple copies of the same specimen.  Examples of specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale.  See TMEP §§904.03 et seq.  Examples of specimens for services are signs, photographs, brochures, website printouts, or advertisements that show the mark used in the actual sale or advertising of the services.  See TMEP §§1301.04 et seq.

 

(c)       STATEMENT:  The following statement:  “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application prior to the filing of the amendment to allege use.”

 

(d)       VERIFICATION:  Applicant must verify the statements in 3(a) and 3(c) (above) in an affidavit or signed declaration under 37 C.F.R. §2.20.  Verification is not required where (1) the dates of use for the added class are stated to be the same as the dates of use specified in the initial application, and (2) the original specimens are acceptable for the added class(es).

 

See 15 U.S.C. §§1051(c), (d), 1112, 1127; 37 C.F.R. §§2.6(a)(2), 2.34(a)(1), 2.76(b), 2.86(a), 2.193(e)(1); TMEP §§1104.10(b)(v), 1403.01, 1403.02(c).

 

With respect to the requirement in 3(b) above in which a specimen is required for each international class of goods and/or services, the specimen(s) of record is acceptable for “computer software for three dimensional landscape design, paver design, retaining wall design, and outdoor fixture design, namely, fireplaces, kitchen cabinets, kitchen counters, barbeques, bar cabinets, benches, canopies, pergolas, patios, decks, stairs, walkways, driveways, sidewalks, pool decks, ponds, and fountains” in International Class 9 only and not for goods identified as “textured and colored sample sheets of plastic and paper showing landscaping paver patterns, colors and textures.”  Applicant must submit additional specimens if different international classes are added to the application.

 

FEES

The filing fees for adding classes to an application are as follows:

 

(1)  A $325 fee per class, when the fees are submitted with an electronic response filed online at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp, via the Trademark Electronic Application System (TEAS).

 

(2)  A $375 fee per class, when the fees are submitted with a paper response.

 

37 C.F.R. §2.6(a)(1)(i)-(ii); TMEP §§810, 1403.02(c).

 

REQUIREMENTS – SECTION 1(b) AND SECTION 44(d) FILING BASES

The application specifies both an intent to use basis under Trademark Act Section 1(b) and a claim of priority under Section 44(d) based on a foreign application.  See 15 U.S.C. §§1051(b), 1126(d); 37 C.F.R. §2.34(a)(2), (a)(4).  However, the application does not include a copy of a foreign registration or a statement indicating whether applicant intends to rely on Section 44(e) as an additional basis for registration.  See 15 U.S.C. §1126(e).

 

Although Section 44(d) provides a basis for filing and a priority filing date, it does not provide a basis for publication or registration.  37 C.F.R. §2.34(a)(4)(iii); TMEP §§1002.02, 1003.03.  It is unclear whether applicant intends to rely on Section 44(e) as an additional basis for registration.

 

Therefore, applicant must clarify the basis in the application by satisfying one of the following:

 

(1)       If applicant intends to rely on Section 44(e), in addition to Section 1(b), as a basis for registration, applicant must so specify.  In addition, (a) applicant’s country of origin must either be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law; and (b) applicant must submit a true copy, photocopy, certification or certified copy of the foreign registration from applicant’s country of origin.  See 15 U.S.C. §1126(b)-(c), (e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1002.01, 1004, 1016.  A copy of the foreign registration must be a copy of a document that issued to applicant by or was certified by the intellectual property office in applicant’s country of origin.  TMEP §1004.01.  If the foreign registration is not written in English, then applicant must provide an English translation.  37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b).  The translation should be signed by the translator.  TMEP §1004.01(b).  If the foreign registration has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English translation, as appropriate), applicant should so inform the trademark examining attorney and request that the U.S. application be suspended until a copy of the foreign registration is available.  TMEP §§716.02(b), 1003.04(b).

 

(2)       If applicant does not intend to rely on Section 44(e) as a basis for registration but still wants to retain the Section 44(d) priority filing date, applicant must so specify and request that the mark be approved for publication based solely on the Section 1(b) basis.  See TMEP §§806.02(f), 806.04(b), 1003.04(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.

 

CLARIFICATION OF APPLICANT’S ENTITY TYPE AND ADDRESS

Applicant’s entity type – Corporation (Delaware) – is inconsistent with the Applicant’s address, and clarification is required regarding the Applicant’s 44(d) filing.  According to the Trademark Manual on Examining Procedures, a US-based corporation can not file a 44(d) application since such applications are reserved for foreign-based entities or individuals.  However, the Applicant may overcome this issue if it can establish that the foreign country – Canada – is the “country of origin” of the goods.  In short, in order for the Applicant to retain 44(d) filing status, the Applicant must sufficiently demonstrate that Canada is the country of origin for the goods, as explained below.

 

TMEP Section 1002.04   Establishing Country of Origin

To obtain registration under §44(e), the applicant must be the owner of a valid registration from the applicant’s country of origin.  Kallamni v. Khan, 101 USPQ2d 1864 (TTAB 2012) (finding that registrant’s shipment of product did not create a bona fide and effective commercial establishment in the Eurpoean Union, that registrant had not established the European Union as his country of origin, and therefore registrant’s European Union registration could not serve as a basis for registration under §44(e)); TMEP §1002.01.  To obtain a priority filing date under §44(d), the applicant’s country of origin must be a treaty country, but the foreign application that is the basis for the priority claim does not have to be filed in the applicant’s country of origin.  TMEP §1002.02.  An applicant domiciled or organized in the United States may be entitled to registration under §44(e) if the applicant can also claim a country of origin other than the United States.  See TMEP §1002.05.

 

Section §44(c) of the Trademark Act defines the applicant’s country of origin as “the country in which he has a bona fide and effective industrial or commercial establishment, or if he has not such an establishment, the country in which he is domiciled, or if he has not a domicile in any of the countries described in paragraph (b) of this section, the country of which he is a national.”  Under this definition, an applicant can have more than one country of origin.

 

If a §44 applicant is domiciled or incorporated in the relevant country, the examining attorney should presume that the country is the applicant’s country of origin, and should not issue any inquiry about the applicant’s country of origin.

 

If a §44(d) applicant is not domiciled, incorporated, or organized in a treaty country, the examining attorney must require the applicant to establish that the country is its country of origin as of the filing date of the foreign application. See TMEP §1002.02. If a §44(e) applicant is not domiciled, incorporated, or organized in the country that issued the foreign registration, the examining attorney must require the applicant to establish that the country is its country of origin as of the date of issuance of the foreign registration.  Generally, a written statement by the applicant or the applicant’s attorney that the applicant has had a bona fide and effective industrial or commercial establishment in the relevant country as of the filing date of the foreign application (for §44(d) applicants), or as of the date of issuance of the foreign registration (for §44(e) applicants), will be sufficient to establish that the country is the applicant’s country of origin.  This statement does not have to be verified. If a §44(d) applicant establishes its country of origin by submitting this statement, and later perfects its §44 basis by submitting a foreign registration issued by the same country, it is not necessary to require another statement as to the foreign registration.

 

If the application is otherwise eligible for approval for publication, or in condition to be allowed for registration on the Supplemental Register, the examining attorney may attempt to contact the applicant by telephone or e-mail to obtain the statement. If the examining attorney is unable to reach the applicant by telephone or e-mail, he or she must issue an Office action. If the applicant responds by telephone or e-mail, the examining attorney must issue an examiner’s amendment to enter the statement into the record.

 

If any evidence in the record contradicts the applicant’s assertion that it has a bona fide and effective industrial or commercial establishment in the relevant country, the examining attorney should require the applicant to set forth the specific circumstances which establish that the applicant maintains a bona fide and effective industrial or commercial establishment in the country.  Relevant factors include the presence of production facilities, business offices, and personnel.

 

The presence of an applicant’s wholly owned subsidiary in a country does not, by itself, establish country of origin.  In re Aktiebolaget Electrolux, 182 USPQ 255 (TTAB 1974).  The fact that the applicant is wholly owned by a foreign company does not establish country of origin.  Karsten Mfg. Corp. v. Editoy AG, 79 USPQ2d 1783 (TTAB 2006).

 

The sale of goods or services outside the United States through related companies or licensees does not create a bona fide commercial establishment and thus does not establish country of origin.  Karsten, supra.  See also Ex parte Blum, 138 USPQ 316 (Comm’r Pats. 1963) (country of origin cannot be established by relying on contractual relationships with a licensee in another country).

 

The United States, by definition, is not a country that has a treaty with the United States.  Therefore, the term “country of origin” in §§44(b) and (c) means a country other than the United States.  In re Fisons Ltd., 197 USPQ 888 (TTAB 1978).  See TMEP §1002.05.

 

TMEP Section 1002.05 – 44(d) Basis for US Applicants

Section 44(b) of the Trademark Act provides that, “Any person whose country of origin is a party to any convention or treaty relating to trademarks, trade or commercial names, or the repression of unfair competition, to which the United States is also a party, or extends reciprocal rights to nationals of the United States by law, shall be entitled to the benefits of this section....”

 

Section 44(i) of the Act provides that “[c]itizens or residents of the United States shall have the same benefits as are granted by this section to persons granted by this section to persons described in subsection [44](b)....”  However, §44(i) does not provide an independent basis for a United States applicant to register a mark under §44(e).  In re Pony Int’l Inc., 1 USPQ2d 1076 (Comm’r Pats. 1986).

 

The United States, by definition, is not a country that has a treaty with the United States.  Therefore, the term “country of origin” in §44(b) means some country other than the United States, and the term “person” in §44(b) means a person who can claim a country of origin other than the United States.  In re Fisons Ltd., 197 USPQ 888 (TTAB 1978).

 

An applicant domiciled in the United States may claim priority under §44(d) based on ownership of an application in a treaty country other than the United States, even if the other country is not the applicant’s country of origin.  See In re ETA Systems Inc., 2 USPQ2d 1367 (TTAB 1987), dec. withdrawn on other grounds (TTAB, November 28, 1988); In re International Barrier Corp., 231 USPQ 310 (TTAB 1986).  See TMEP §1002.02.

 

However, an applicant domiciled in the United States may not obtain registration under §44(e) unless the applicant is the owner of a registration from an eligible country other than the United States and the applicant can establish that the foreign country is the applicant’s country of origin.  See Karsten Mfg. Corp. v. Editoy, 79 USPQ2d 1783 (TTAB 2006); In re International Barrier Corp., supra; In re Fisons, supra.  See TMEP §1002.01.

 

For example, a Texas corporation may assert a priority claim under §44(d) based on ownership of an application in Mexico, regardless of whether Mexico is its country of origin.  However, this applicant must also assert a valid basis for registration (see TMEP §1003.03).  The applicant may do so by asserting use in commerce under §1(a) and/or a bona fide intention to use in commerce under §1(b) as its basis for publication.  The applicant cannot obtain registration in the United States under §44(e) unless the applicant establishes that Mexico is one of its countries of origin.

 

See TMEP §1002.04 regarding the applicant’s country of origin, and TMEP §1002.03 and Appendix B for information about how to determine whether a particular country is a party to an international treaty or agreement that provides for priority and/or registration based on ownership of a foreign registration.

 

See also TMEP §1002.01 for information about how the examining attorney should handle an application in which the applicant is not entitled to registration under §44(e), and TMEP §1002.02 for information about how the examining attorney should handle an application in which the applicant is not entitled to priority under §44(d).

 

SEARCH

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).

 

QUESTIONS?

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.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

 

/Mary J Rossman/

Trademark Attorney

Law Office 109

ph: 571 272 9213

mary.rossman@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 the Trademark Electronic Application System (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 the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/.  Please keep a copy of the TSDR status screen.  If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or 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/trademarks/teas/correspondence.jsp.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 12/24/2012 FOR U.S. APPLICATION SERIAL NO. 85724666

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click 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)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 12/24/2012 (or sooner if specified in the Office action).  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.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.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System (TEAS) response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@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.