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: 5/5/2014

 

 

TEAS PLUS APPLICANTS – TO MAINTAIN REDUCED FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE:  Applicants who filed their application online using the lower-fee TEAS Plus application form must (1) continue to submit certain documents online using TEAS, including responses to Office actions (see TMEP §819.02(b) for a complete list of these documents); (2) accept correspondence from the USPTO via e-mail throughout the examination process; and (3) maintain a valid e-mail address.  See 37 C.F.R. §2.23(a)(1), (a)(2); TMEP §§819, 819.02(a).  TEAS Plus applicants who do not meet these three 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.  However, in certain situations, authorizing an examiner’s amendment by telephone will not incur this additional fee.  

 

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.

 

 

Summary of Refusals and/or Requirements

 

The following is a summary of the requirements and/or refusals outlined below to which the applicant must respond.

 

n  Likelihood of confusion refusal

n  Request for product information and requirement to amend the identification of goods

n  Disclaimer

n  Clarify item on drawing, submit new drawing if necessary

n  Amend color claim and mark description

 

 

SECTION 2(d) REFUSAL:  LIKELIHOOD OF CONFUSION

 

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 4466785 and 4082968.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the enclosed registrations.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely that a potential consumer would be confused or mistaken or deceived as to the source of the goods and/or services of the applicant and registrant.  See 15 U.S.C. §1052(d).  The court in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) listed the principal factors to be considered when determining whether there is a likelihood of confusion under Section 2(d).  See TMEP §1207.01.  However, not all the factors are necessarily relevant or of equal weight, and any one factor may be dominant in a given case, depending upon the evidence of record.  Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1355, 98 USPQ2d 1253, 1260 (Fed. Cir. 2011); In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont, 476 F.2d at 1361-62, 177 USPQ at 567.

 

In this case, the following factors are the most relevant:  similarity of the marks, similarity of the goods and/or services, and similarity of trade channels of the goods and/or services.  See In re Dakin’s Miniatures Inc., 59 USPQ2d 1593 (TTAB 1999); TMEP §§1207.01 et seq.

 

Taking into account the relevant du Pont factors, a likelihood of confusion determination in this case involves a two-part analysis.  See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361-62, 177 USPQ 563, 567 (C.C.P.A. 1973); In re 1st USA Realty Prof’ls Inc., 84 USPQ2d 1581, 1584 (TTAB 2007); see also In re Dixie Rests. Inc., 105 F.3d 1405, 1406-07, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997).  The marks are compared for similarities in their appearance, sound, connotation and commercial impression.  TMEP §§1207.01, 1207.01(b).  The goods and/or services are compared to determine whether they are similar or commercially related or travel in the same trade channels.  See Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002); Han Beauty, Inc. v. Alberto-Culver Co., 236 F.3d 1333, 1336, 57 USPQ2d 1557, 1559 (Fed. Cir. 2001); TMEP §§1207.01, 1207.01(a)(vi).

 

 

The Marks at Issue

 

The applicant seeks to register GUARDIAN BED BUG PROTECTION and design  in connection with: Bed blankets; Bed covers; Bed linen; Bed sheets; Bed skirts; Bedsheets; Box spring covers; Comforters; Contour sheets; Contoured mattress covers; Cotton fabric; Coverlets; Duvet covers; Duvets; Fitted bed sheets; Flat bed sheets; Mattress covers; Mattress pads; Pillow cases; Pillow covers; Pillow shams; Pillowcases; Quilt covers; Quilts; Shams; Sheet sets; Throws, in Class 24.

 

The registered marks are: 

 

ALLERGY GUARDIAN, U.S. Registration No. 4466785, (with ALLERGY disclaimed) for: 

 

Manufacture of general product lines in the field of bedding to the order and specification of others, in Class 40 and

 

Materials sourcing namely, procurement in the nature of non allergenic products for bedding for others; materials sourcing, namely, logistics management in the field of non allergenic products for bedding for others; materials sourcing, namely, business consulting services relating to product distribution, operations management services, logistics, reverse logistics, supply chain, and production systems and distribution solutions, all pertaining to allergy control products for bedding; business marketing services pertaining to allergy control products for bedding for others, in Class 35

 

BED GUARDIAN and design., U.S. Registration No. 4082968, (with BED disclaimed), for: 

 

Contoured mattress covers; mattress covers, in Class 24.

 

 

Comparison of the Marks

 

 

In a likelihood of confusion determination, the marks are compared for similarities in their appearance, sound, meaning or connotation, and commercial impression.  In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b)-(b)(v).  Similarity in any one of these elements may be sufficient to find the marks confusingly similar.  In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b).

 

The marks are compared in their entireties under a Trademark Act Section 2(d) analysis.  See TMEP §1207.01(b).  Nevertheless, one feature of a mark may be recognized as more significant in creating a commercial impression; greater weight is given to that dominant feature in determining whether the marks are confusingly similar.  See In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); TMEP §1207.01(b)(viii), (c)(ii).

 

All of these marks share the same, dominant element in the word GUADIAN.  The words ALLERGY, BED and BED BUG PROTECTION in each mark simply describe to consumers a key feature or intended use of each product. 

 

For a composite mark containing both words and a design, the word portion may be more likely to be impressed upon a purchaser’s memory and to be used when requesting the goods and/or services.  Joel Gott Wines, LLC v. Rehoboth Von Gott, Inc., 107 USPQ2d 1424, 1431 (TTAB 2013) (citing In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999)); TMEP §1207.01(c)(ii); see In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908, 1911 (Fed. Cir. 2012) (citing CBS Inc. v. Morrow, 708 F. 2d 1579, 1581-82, 218 USPQ 198, 200 (Fed. Cir 1983)).  Thus, although such marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed.  In re Viterra Inc., 671 F.3d at 1366, 101 USPQ2d at 1911 (Fed. Cir. 2012) (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)). 

 

 

 

Comparison of the Goods/Services

 

The goods and/or services of the parties need not be identical or directly competitive to find a likelihood of confusion.  See Safety-Kleen Corp. v. Dresser Indus., Inc., 518 F.2d 1399, 1404, 186 USPQ 476, 480 (C.C.P.A. 1975); TMEP §1207.01(a)(i).  Rather, it is sufficient to show that because of the conditions surrounding their marketing, or because they are otherwise related in some manner, the goods and/or services would be encountered by the same consumers under circumstances such that offering the goods and/or services under confusingly similar marks would lead to the mistaken belief that they come from, or are in some way associated with, the same source.  In re Iolo Techs., LLC, 95 USPQ2d 1498, 1499 (TTAB 2010); see In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1566-68, 223 USPQ 1289, 1290 (Fed. Cir. 1984); TMEP §1207.01(a)(i).

 

As to BED GUARDIAN, the goods of the parties are identical in that both market/intend to market mattress covers and other bed coverings.  Where the goods and/or services of an applicant and registrant are “similar in kind and/or closely related,” the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as in the case of diverse goods and/or services.  In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); see Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1242, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004); TMEP §1207.01(b).

 

As to ALLERGY GUARDIAN, the registrant manufactures bedding products to the order and specification of others, while the applicant intends to market bedding.  Both product descriptions are broad enough to include the manufacture of bedding or the bedding itself, that contains anti-allergen and bed bug protective features.  These goods would be marketed to the same consumer classes because consumers who are in the market for bedding with anti-allergen or anti-bed bug protections would look for bedding made from certain materials that serve these functions. The attached website discusses such bedding made from tightly woven fabrics that bugs cannot penetrate, or fabrics treated with anti-microbials.

 

Where evidence shows that the goods at issue have complementary uses, and thus are often used together or otherwise purchased by the same purchasers for the same or related purposes, such goods have generally been found to be sufficiently related such that confusion would be likely if they are marketed under the same or similar marks.  See In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1567, 223 USPQ 1289, 1290 (Fed. Cir. 1984) (holding bread and cheese to be related because they are often used in combination and noting that “[s]uch complementary use has long been recognized as a relevant consideration in determining a likelihood of confusion”); Gen. Mills Inc. v. Fage Dairy Processing Indus., 100 USPQ2d 1584, 1597-98 (TTAB 2012) (holding yogurt products and ready-to-eat cereals to be related because they are complementary products given consumers’ longstanding behavior of mixing these types of breakfast foods and the fact that consumers are regularly exposed to yogurt and cereal combined as a food product). 

 

This Internet evidence establishes that the goods and/or services are similar or complementary in terms of purpose or function.  Therefore, applicant’s and registrant’s goods and/or services are considered related for likelihood of confusion purposes.  See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).

 

Evidence obtained from the Internet may be used to support a determination under Section 2(d) that goods and/or services are related.  See, e.g., In re G.B.I. Tile & Stone, Inc., 92 USPQ2d 1366, 1371 (TTAB 2009); In re Paper Doll Promotions, Inc., 84 USPQ2d 1660, 1668 (TTAB 2007).

 

Therefore, registration is refused under Section 2(d) of the Trademark Act.

 

 

IF THE APPLICANT CHOOSES TO RESPOND TO THE FOREGOING, THEN THE APPLICANT MUST ALSO ADDRESS ADDITIONAL REQUIREMENTS

 

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.  Applicant must respond to the requirement(s) set forth below.

 

 

AMEND IDENTIFICATION OF GOODS

 

The use or intended use of the applied-for mark on goods and/or services that do not in fact have or exhibit bed bug protective elements is or will be deceptive.  See TMEP §1203.02-.02(b).  The examiner has attached sample websites that show others in the applicant’s industry promote their bedding as being made of specialized materials, or having specialized closures, to protect against bed bugs and other allergens.  These features would be material to a consumer’s decision to purchase certain types of bedding because of the health issues surrounding bed bugs and other allergens.  To avoid a deceptiveness refusal, applicant must amend the identification to indicate that the goods and/or services possess this relevant feature or characteristic.  See TMEP §§1203.02(e)(ii), (f)(i), 1402.05 et seq.  Merely amending the identification to exclude goods or services with the named feature or characteristic will not avoid a deceptiveness refusal.  TMEP §1203.02(f)(i).

 

Therefore, applicant must amend the identification to the following, if accurate: 

 

Class 24:         Bed blankets; Bed covers; Bed linen; Bed sheets; Bed skirts; Bedsheets; Box spring covers; Comforters; Contour sheets; Contoured mattress covers; Cotton fabric; Coverlets; Duvet covers; Duvets; Fitted bed sheets; Flat bed sheets; Mattress covers; Mattress pads; Pillow cases; Pillow covers; Pillow shams; Pillowcases; Quilt covers; Quilts; Shams; Sheet sets; Throws; all of the foregoing containing features that protect against bed bugs

 

 

In the alternative, registration is refused because the applied-for mark is deceptively misdescriptive of applicant’s goods and/or services.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see In re White Jasmine LLC, 106 USPQ2d 1385, 1394-95 (TTAB 2013) (holding WHITE JASMINE deceptively misdescriptive of tea); In re Schniberg, 79 USPQ2d 1309, 1312 (TTAB 2006) (holding SEPTEMBER 11, 2011 deceptively misdescriptive of history books and entertainment services); TMEP §1209.04.

 

 

PRODUCT INFORMATION REQUIRED

 

The nature of the goods with which applicant intends to use or is using the mark is not clear from the present record and additional information is required.  To permit proper examination of the application, applicant must provide the following:

 

(1)  A written statement explaining whether the goods do or will contain features that render them bed bug resistant or that protect against bed bugs. 

 

(2)  A sample of advertisements or promotional materials featuring the goods and/or a photograph of the identified goods, or if such materials are not available, applicant must submit samples of advertisements or promotional materials of similar goods.

 

(3)  A written statement describing in detail the nature, purpose, and channels of trade of the goods.

 

See 37 C.F.R. §2.61(b); In re AOP LLC, 107 USPQ2d 1644, 1650-51 (TTAB 2013); In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004); TMEP §§814, 1402.01(e). 

 

Failure to comply with a request for information can be grounds for refusing registration.  In re AOP LLC, 107 USPQ2d at 1651; In re DTI P’ship LLP, 67 USPQ2d 1699, 1701-02 (TTAB 2003); TMEP §814.  Merely stating that information about the goods or services is available on applicant’s website is an inappropriate response to a request for additional information and is insufficient to make the relevant website information of record.  See In re Planalytics, Inc., 70 USPQ2d at 1457-58.

 

Applicant is advised that, if applicant’s response to the request for information indicates that the goods identified in the application do not or will not contain features that protect against bed bugs, then registration may be refused on the ground that the applied-for mark is deceptive.  Trademark Act Section 2(a), 15 U.S.C. §1052(a); see In re Budge Mfg. Co., 857 F.2d 773, 775-77, 8 USPQ2d 1259, 1260-62 (Fed. Cir. 1988); In re ALP of S. Beach Inc., 79 USPQ2d 1009, 1010 (TTAB 2006); TMEP §1203.02-02(e).

 

If the goods do/will contain such features, then the applicant may comply with these requirements by amending the identification of goods to indicate so (as provided above) and by submitting a disclaimer statement for the wording BED BUG PROTECTION (as provided below).

 

 

DISCLAIMER

 

Applicant must disclaim BED BUG PROTECTION because it merely describes an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and thus is an unregistrable component of the mark.  See 15 U.S.C. §§1052(e)(1), 1056(a); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); TMEP §§1213, 1213.03(a). 

 

As discussed above, the examiner has attached several sample websites that discuss the importance of buying bedding with protection against bed bugs, dust mites and other allergens or irritants.  The attached websites show others in the industry promoting their bed coverings and bedding as having features that provide bed bug protection.  The applicant’s identification of goods is broad enough to include bedding and coverings that also feature bed bug protections, such as specific fabrics, closures and the like that protect against bed bug infestation.  Therefore, the wording merely describes a key feature of the goods.

 

An applicant may not claim exclusive rights to terms that others may need to use to describe their goods and/or services in the marketplace.  See Dena Corp. v. Belvedere Int’l, Inc., 950 F.2d 1555, 1560, 21 USPQ2d 1047, 1051 (Fed. Cir. 1991); In re Aug. Storck KG, 218 USPQ 823, 825 (TTAB 1983).  A disclaimer of unregistrable matter does not affect the appearance of the mark; that is, a disclaimer does not physically remove the disclaimed matter from the mark.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 978, 144 USPQ 433, 433 (C.C.P.A. 1965); TMEP §1213. 

 

If applicant does not provide the required disclaimer, the USPTO may refuse to register the entire mark.  See In re Stereotaxis Inc., 429 F.3d 1039, 1040-41, 77 USPQ2d 1087, 1088-89 (Fed. Cir. 2005); TMEP §1213.01(b).

 

Applicant should submit a disclaimer in the following standardized format:

 

No claim is made to the exclusive right to use “BED BUG PROTECTION” apart from the mark as shown.

 

For an overview of disclaimers and instructions on how to satisfy this disclaimer requirement online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/disclaimer.jsp.

 

 

CLARIFY DRAWING

 

The drawing contains an image that says “PMS 216” to the right of the mark.  This appears to be an indicator of the Pantone shade of burgundy in the mark as “PMS” appears to stand for “Pantone Matching System.”  If that is the case, and the burgundy square with PMS 216 written under it are not part of the actual trademark, then the applicant must submit a new drawing showing the burgundy square with “PMS 216” deleted from the mark because it is merely informational matter.  This matter is not part of the applicant’s trademark.  See TMEP §§807.02, 807.14(a).

 

A special form drawing must show the mark (1) in black on a white background, if color is not a feature of the mark, or (2) in color on a white background, if color is a feature of the mark.  37 C.F.R. §2.52(b); see TMEP §807.04.  In addition, the mark must be shown clearly so as to produce a high quality image when copied; all lines in the drawing must be clean, sharp, solid, and not fine or crowded.  See 37 C.F.R. §§2.52, 2.53(c), 2.54(e); TMEP §807.04(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(b); see 37 C.F.R. §2.53(b).  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).

 

 

AMEND COLOR CLAIM AND MARK DESCRIPTION

 

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. 

 

Therefore, applicant must provide a more complete description of the applied-for mark.  The following is suggested:

 

The mark consists of a stylized shield in black, white, silver and gray with a burgundy G in its center and a gray, white and black ring around it, above the word GUARDIAN in burgundy, above the wording BED BUG PROTECTION in black. The lines on the shield are intended to suggest the look and shine of metal.

 

The applicant must also amend the color claim to include reference to the color white, which appears in the shield.  Applications for marks depicted in color must include a complete list of all the colors claimed as a feature of the mark.  37 C.F.R. §2.52(b)(1); see TMEP §§807.07(a) et seq. 

 

If black, white and/or gray are not being claimed as a color feature of the mark, applicant must state that the colors black, white and/or gray represent background, outlining, shading and/or transparent areas and are not part of the mark.  TMEP §807.07(d).  Generic color names must be used to identify the colors in the mark, e.g., magenta, yellow, turquoise.  TMEP §807.07(a)(i)-(a)(ii).

 

Therefore, applicant must provide the required color claim.  The following is suggested, if accurate:  “The colors black, white, silver, gray and burgundy are claimed as a feature of the mark.”  TMEP §807.07(a)(i).

 

 

 

RESPONSE GUIDELINES

 

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).

 

The USPTO applies the following legal authorities when processing a trademark and service mark application: 

 

• The Trademark Act of 1946
• The Trademark Rules of Practice
• Precedential court and Trademark Trial and Appeal Board decisions
• USPTO’s Trademark Manual of Examining Procedure (TMEP) (8th ed. Oct. 2011)
• USPTO’s Trademark Trial and Appeal Board Manual of Procedure (TBMP) (3d ed. May 2011) 

 

15 U.S.C. §§1051 et seq.; 37 C.F.R. pts. 2, 3, 6, 7, 10, 11; see TMEP intro., §§101, 107, 110. 

 

Official USPTO letters and notices sent to applicants generally refer to one or more of these legal resources.  Both the Trademark Act and the Trademark Rules of Practice can be viewed online at the Trademarks’ Home Page at http://www.gov.uspto.report/trademarks/index.jsp by clicking on “Laws & Regulations” on the left side of the screen.  The TMEP is also available via the Home Page by clicking on “Manuals, Guides, Official Gazette” on the left side of the screen.  Trademark Trial and Appeal Board decisions and the TBMP can be found at their website located at http://www.gov.uspto.report/trademarks/process/appeal/index.jsp.

 

The acronym “TMEP” used in official USPTO letters and notices refers to the USPTO’s Trademark Manual of Examining Procedure (8th ed. Oct. 2011), a manual written by USPTO staff that explains the laws and procedures governing the trademark application, registration, and post registration processes.  The TMEP can be viewed online at the Trademarks’ Home Page at http://www.gov.uspto.report/trademarks/index.jsp by clicking on “Manuals, Guides, Official Gazette” on the left side of the screen. 

 

 

Advisory Concerning Legal Assistance

 

Because of the legal technicalities involved in this application, applicant may wish to hire an attorney specializing in trademark or intellectual property law.  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 or a local telephone directory.  The USPTO cannot aid in the selection of an attorney.  37 C.F.R. §2.11. 

 

 

 

/Elissa Garber Kon/

Examining Attorney, Law Office 106

phone:  571-272-9181

email:  elissagarber.kon@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 5/5/2014 FOR U.S. APPLICATION SERIAL NO. 86178701

 

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 5/5/2014, 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. 

 

/Elissa Garber Kon/

Examining Attorney, Law Office 106

phone:  571-272-9181

email:  elissagarber.kon@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.