To: | The McDonald Group, International (John@Jennisonlaw.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 86208818 - RESURGE - N/A |
Sent: | 6/10/2014 10:25:15 AM |
Sent As: | ECOM106@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 86208818
MARK: RESURGE
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: The McDonald Group, International
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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: 6/10/2014
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 ISSUES that applicant must address:
Likelihood of Confusion:
The applicant applied to register the mark: “RESURGE" for clothing in Int. class 25.
The registered mark(s) is/are: U.S. Registration No(s). 3977966 for “RESURGE 1620” for clothing in Int. class 25.
Similarities in Appearance, Sound, Connotation and Commercial Impression:
"RESURGE" vs. "RESURGE 1620”
In this case, the following factors are the most relevant: similarity of the marks as to RESURGE, similarity and nature of the goods, and similarity of the trade channels of the goods. See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.
Goods
Other Informalities:
If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informalities.
The application was not signed and verified, which are application requirements. See 15 U.S.C. §§1051(b), 1126(d)-(e); 37 C.F.R. §§2.33(a), (b)(2), 2.34(a)(2), (a)(3)(i), (a)(4)(ii). Therefore, applicant must verify the statements specified further below in an affidavit or signed declaration under 37 C.F.R. §2.20. See 15 U.S.C. §§1051(b)(3), 1126(d)-(e); 37 C.F.R. §§2.33(a), (b)(2), (c), 2.193(e)(1); TMEP §§804.02, 806.01(b)-(d).
To respond to this requirement online using the Trademark Electronic Application System (TEAS) response form, answer “yes” to the TEAS response form wizard question relating to submitting a “signed declaration,” and follow the instructions within the form for signing.
To respond to this requirement on paper, via regular mail, applicant may provide the following statements and declaration at the end of the response, personally signed by a person authorized under 37 C.F.R. §2.193(e)(1) and dated, with the printed or typed name of the signatory appearing immediately below the signature. See 37 C.F.R. §§2.20, 2.33(a), (b)(2), (c), 2.193(a), (d); TMEP §§611.01(b), 804.01(b). The signatory’s particular title or position should also be specified. See TMEP §804.04.
STATEMENTS: The signatory believes that: the applicant is entitled to use the trademark and/or service mark in commerce; the applicant has a bona fide intention and has had a bona fide intention, as of the application filing date, to use or use through the applicant’s related company or licensee the mark in commerce on or in connection with the goods and/or services in the application; and to the best of the signatory’s knowledge and belief, no other person has the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods and/or services of such other person, to cause confusion or mistake, or to deceive.
DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements and the like may jeopardize the validity of the application or any registration resulting therefrom, declares that all statements made of his or her own knowledge are true and all statements made on information and belief are believed to be true.
_____________________________
(Signature)
_____________________________
(Print or Type Name and Position
(Date)
Identification of Goods:
Applicant may adopt the following identification, if accurate:
International Class 5
infant diaper covers, cloth diaper sets with undershirt and diaper cover.
International Class 25
Clothing, namely, caps, hats, visors, knitted headwear, shirts, T-shirts, tank tops, sweaters, turtlenecks, pullovers, shorts, pants, dresses, baseball uniforms, jerseys, warm-up suits, jogging suits, sweatshirts, sweatpants, underwear, boxer shorts, sleepwear, thermal loungewear, jackets, cloth bibs, infant wear, rompers, creepers, baby booties, ties, wristbands, footwear, socks, hosiery, slippers, aprons
For assistance regarding an acceptable listing of goods and/or services, please see the on-line searchable Manual of Acceptable Identifications of Goods and Services, at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/.
Recitation and Identification Amendment Advisory:
Please note that, while the identification of goods may be amended to clarify or limit the goods, adding to the goods or broadening the scope of the goods is not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, applicant may not amend the identification to include goods that are not within the scope of the goods set forth in the present identification.
If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the following for those goods and/or services based on an intent to use the mark in commerce under Trademark Act Section 1(b)
Applicant must list the goods and/or services by international class with the classes listed in ascending numerical order. TMEP § 1403.01; and
Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid. 37 C.F.R. §2.86(a)(2); TMEP §§810.01 and 1403.01.
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).
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.
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 active 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).
/LDA/
Lourdes Ayala, Attorney at Law
Law Office 106
Telephone Number 571-272-9316
Fax: 571-272-9106
Lourdes.Ayala@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.