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: 12/24/2013

 

 

 

 

The referenced application and voluntary amendment filed on September 20, 2013 have 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).

 

REQUEST TO CHANGE OWNER NAME – NO ASSIGNMENT FILED

 

Applicant has requested that the owner name be amended; however, applicant has not provided a reason for this request, or provided or recorded ownership transfer documentation.  The name of the original applicant is Eyetique Corporation; applicant seeks to amend this to Norman Childs.  The request to change the owner name raises a question regarding whether the proper party filed the original application.  Therefore, applicant must clarify whether the proper party filed the original application.  In addition, the request to amend the owner name is denied until clear chain of title to the new party has been established.

 

An application is void if it was filed in the name of a party who did not own, or was not entitled to use, the applied-for mark on the application filing date.  37 C.F.R. §2.71(d); Huang v. Tzu Wei Chen Food Co., 849 F.2d 1458, 1459-60, 7 USPQ2d 1335, 1335-36 (Fed. Cir. 1988); TMEP §§803.06, 1201.02(b); see 15 U.S.C. §1051(a)(1).  A void application cannot be cured by amendment or assignment.  TMEP §§803.06, 1201.02(b); see 37 C.F.R. §2.71(d).  In these cases, the true owner must file a new application.  TMEP §803.06.

 

If the application was filed by the owner and the original applicant has since changed its name or transferred ownership of the mark to another entity, the new owner must file documentation to establish its ownership of the application as follows:

 

(1)  The new owner must (a) record an assignment, name change, or other documentation affecting title with the USPTO’s Assignment Recordation Branch showing a clear chain of title to the mark in the new owner; and (b) promptly notify the trademark examining attorney that the documentation has been recorded.

 

(2)  The new owner must file either (a) a written statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20, explaining in detail the chain of title to the new owner; or (b) documentation showing transfer of title to the new owner.  However, the registration will not issue in the name of the new owner without recording chain of title documentation with the USPTO and notifying the trademark examining attorney, as specified in (1) above.

 

TMEP §502.01; see 15 U.S.C. §1060; 37 C.F.R. §§2.193(e)(1), 3.73(b)(1); TMEP §502.02(a).

 

Assignments and other documents affecting title may be filed electronically at http://etas.uspto.gov/.  There is a fee for recording ownership changes.  37 C.F.R. §§2.6(b)(6), 3.41(a); TMEP §503.03(d).  Recording an assignment or other ownership transfer document does not constitute a response to an Office action.  TMEP §503.01(d). 

 

If the party applying to register the mark is in fact the owner of the mark, but there is a typographical error or other minor mistake in the manner the owner name is set forth in the application, the mistake may be corrected by amendment.  U.S. Pioneer Elecs. Corp. v. Evans Mktg., Inc., 183 USPQ 613, 614 (Comm’r Pats. 1974); TMEP §1201.02(c) (providing examples of correctable and non-correctable errors).

 

DESCRIPTION OF MARK AND COLOR CLAIM

 

Applicant must amend the color claim and mark description to identify all the colors in the mark drawing.  See 37 C.F.R. §2.52(b)(1); TMEP §807.07(a)-(a)(ii).  The following colors have been omitted from the color claim:  tan.  In addition, the following colors have been omitted from the mark description:  tan, white, black.

 

A complete color claim must reference all the colors appearing in the drawing of the mark.  See 37 C.F.R. §2.52(b)(1); TMEP §§807.07(a) et seq.  Similarly, a complete mark description for a mark depicted in color must identify all the literal and design elements in the mark and specify where the colors appear in those elements.  See 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §§807.07(a) et seq.  However, if black, white, and/or gray are not being claimed as a color feature of the mark, applicant must exclude them from the color claim and include in the mark description a statement that the colors black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark.  See TMEP §807.07(d).

 

Also, the description of the mark is accurate but incomplete because it does not describe all the significant aspects of the applied-for mark. Applications for marks not in standard characters must include an accurate and concise description of the entire mark that identifies literal elements as well as any design elements. See 37 C.F.R. §2.37; TMEP §§808 et seq.

 

The following color claim and mark description are suggested, if accurate:

 

Color claim:  “The colors red, black, yellow, white and tan are claimed as a feature of the mark.”

 

Mark description:  “The mark consists of the number "3" in red stylized font. To the right of the "3" is the word "GUYS" in a black capitalized stylized font. "3 GUYS" is outlined in yellow. Under the words "3 GUYS" are the words "OPTICAL CENTER" in white lowercase letters. Above the words is an image of three heads of men drawn in black with tan skin and white teeth. The first head has black hair and is wearing red glasses. The second head is bald and is wearing yellow glasses.  The third head has black hair is wearing black glasses. The heads are outlined in red. The words and head images appear on a black background.”

 

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.

 

/William D Jackson/

Attorney Advisor - Trademarks

Law Office 108

571-272-3064

William.Jackson@uspto.gov

 

TO RESPOND TO THIS LETTER:  Go to http://www.uspto.gov/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.uspto.gov/.  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.uspto.gov/trademarks/process/status/.

 

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.uspto.gov/trademarks/teas/correspondence.jsp.