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: 2/28/2014

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue 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).

 

SUMMARY OF ISSUES that applicant must address:

 

• Specimen Requirement

 

 

SPECIMEN REQUIREMENT

 

Applicant has applied for a multitude of goods in International Class 16.  Note that if an identification is so broad that it encompasses a wide range of products and services, the applicant must submit evidence that it actually uses the mark on a wide range of products and services to obtain registration. See In re Air Products & Chemicals, Inc., 192 USPQ 84, recon. denied 192 USPQ 157 (TTAB 1976); 37 CFR 2.61(b); TMEP §§904.01(a) and 1402.03.

 

Here, the identification of goods includes “price tags” and “paper hang tags”.  However, use of a mark on such items is not considered appropriate trademark use if the items are merely incidental items used in conducting an ongoing business enterprise and are not “goods in trade.”  See In re Thomas White Int’l, Ltd., 106 USPQ2d 1158, 1161 (TTAB 2013).  “Goods in trade” are items sold, transported, or distributed in commerce for use by others, and provide a use or utility to others.  See 15 U.S.C. §1127; In re S’holders Data Corp., 495 F.2d 1360, 1361, 181 USPQ 722, 723 (C.C.P.A. 1974); TMEP §§1202.06 et seq.  Specifically, if applicant uses price tags and paper hang tags for use on sale of its own goods, those tags used to conduct applicant’s business and are not “goods in trade.”

 

Therefore, applicant must submit an additional specimen showing the mark used in commerce on these goods, such as on packaging for price tags and hang tags. Alternatively, applicant may delete these goods from its identification.

 

To submit a verified specimen online using 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 specimen, (3) describe what the specimen consists of, and (4) select the statement that “The substitute (or new, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application.”  These steps appear on different pages of the TEAS response form. 

 

 

RESPONSE GUIDELINES

 

For this application to proceed toward registration, applicant must explicitly address each 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.  Further, although the trademark examining attorney may provide additional explanation pertaining to the requirement 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

 

 

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.

 

 

 

/Marynelle W. Wilson/

Examining Attorney

Law Office 113

Phone: 571-272-7978

Email: marynelle.wilson@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 2/28/2014 FOR U.S. APPLICATION SERIAL NO. 86115943

 

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 2/28/2014, 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. 

 

/Marynelle W. Wilson/

Examining Attorney

Law Office 113

Phone: 571-272-7978

Email: marynelle.wilson@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.