UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

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

 

 

 

EXAMINER’S AMENDMENT/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: 9/20/2013

 

 

PRIORITY ACTION

 

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 September 12, 2013, the trademark examining attorney and Mr. Shimon Bouskila 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.

 

Acquired Distinctiveness

 

Applicant seeks registration of a photographic image of a configuration of a Perfume Bottle. The Applicant owns a registration on the Principal Register for the identical mark as depicted in a drawing and for identical goods, Reg. No. 2,572,569.  (See attached print out). This registration is incontestable.  Because the Applicant owns an incontestable registration for the identical mark and identical goods on the Principal Register and because the applied-for mark has been in use in commerce for over twenty years, Applicant is invited to submit a claim of acquired distinctiveness under Trademark Act Section 2(f), based on long term use of the mark and ownership of the identical mark on the Principal Register.

 

The application record indicates that applicant has used its mark for a long time; therefore, applicant can seek registration on the Principal Register under Trademark Act Section 2(f), based on acquired distinctiveness.  See 15 U.S.C. §1052(f); TMEP §1212.05.

 

To amend the application to Section 2(f) based on at least five years’ use, applicant should submit the following written statement claiming acquired distinctiveness, if accurate:

 

The mark has become distinctive of the goods and/or services through applicant’s substantially exclusive and continuous use in commerce for at least the five years immediately before the date of this statement.

 

TMEP §1212.05(d).  Applicant must verify this statement with an affidavit or signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.41(b); TMEP §1212.05(d); see 37 C.F.R. §2.193(e)(1).

 

Instructions for Submitting Declaration to Support Use of Claim of Acquired Distinctiveness

 

The following are instructions for submitting a declaration to support the distinctiveness claim:

 

Applicant may submit a declaration online using the Trademark Electronic Application System (TEAS) response to Office action form at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  When in the screen of the TEAS response form wizard, answer “yes” to the wizard question relating to submitting a “signed declaration,” and follow the instructions within the form for signing.  See 37 C.F.R. §§2.20, 2.33(a)-(b)(1), 2.193(a)-(e)(1); TMEP §§611.01(c), 804.01(b). 

 

Mark Description

 

The description of the mark uses broad, vague language that does not accurately describe the applied-for mark.  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 a photograph of a configuration of a perfume bottle with straight sides and with and with  diagonally ribbed surface relief on the sides of the bottle.

 

Drawing

 

Applicant has described the mark as a photograph of a perfume bottle with a cap and has indicated that the image does not contain any wording.  The photographs submitted contain printed figurative design elements on the surface of the bottle. Therefore, Applicant must submit a new photograph of the bottle that corresponds with the description of the mark, namely, the photograph  should not include the printed figurative elements.  Instead, it should depict the glass perfume bottle with the surface relief and the cap.

 

The drawing is not acceptable because it will not create a high quality image when reproduced.  See TMEP §807.04(a).  Applicant must submit a new photograph of the bottle that corresponds with the description of the mark, namely, the photograph  should not include the printed figurative elements.  Instead, it should depict the glass perfume bottle with the surface relief and the cap.

 

A clear drawing of the mark is an application requirement.  37 C.F.R. §2.52.  Therefore, applicant must submit a new drawing showing a clear depiction of the mark.  All lines must be clean, sharp and solid, and not fine or crowded.  37 C.F.R. §§2.53(c), 2.54(e); TMEP §§807.05(c), 807.06(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). 

 

The USPTO will not accept amendments or changes to the applied-for mark shown in a new drawing if the changes would materially alter the mark.  37 C.F.R. §2.72; see TMEP §§807.13 et seq., 807.14.

 

Assistance

 

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.

 

 

EXAMINER’S AMENDMENT

 

APPLICATION HAS BEEN AMENDED:  In accordance with the authorization granted by the individual identified in the Priority Action section above, the trademark examining attorney has amended the application as indicated below.  Please advise the undersigned immediately of any objections.  TMEP §707.  Any amendments to the identification of goods and/or services may clarify or limit the goods and/or services, but may not add to or broaden the scope of the goods and/or services.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq.

 

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.

 

Stippling Statement

 

The stippling statement is deleted from the application.

 

 

Trademark Act Section 2(f).

 

As demonstrated by the attached print out of Reg. No. 2,572,569, the Applicant owns an incontestable registration for the configuration of the same bottle under Trademark Act Section 2(f), in which the mark is depicted in a drawing rather than a photograph. Because the mark in Reg. No. 2,572,569 is an identical perfume bottle to that in this application, the following claim of acquired distinctiveness is entered in the application.

 

Applicant is amending the application to seek registration on the Principal Register under Trademark Act Section 2(f) by claiming acquired distinctiveness through ownership of U.S. Registration No(s). 2,572,569.  See 15 U.S.C. §1052(f); TMEP §§1212.04 et seq. 

 

The mark has become distinctive of the goods and/or services as evidenced by ownership of U.S. Registration No(s). 2,572,569 on the Principal Register for the same mark for related goods and/or services.

 

TMEP §1212.04(e); see 37 C.F.R. §2.41(b).

 

 

 

 

 

/Susan A. Richards/

Susan A. Richards

Law Office 103

(571) 272-8266

susan.richards@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 9/20/2013 FOR U.S. APPLICATION SERIAL NO. 85938032

 

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 9/20/2013, 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. 

 

/Susan A. Richards/

Susan A. Richards

Law Office 103

(571) 272-8266

susan.richards@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.