UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

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

 

 

 

EXAMINER’S AMENDMENT

 

ISSUE/MAILING DATE: 9/8/2014

 

This Examiner’s Amendment is in response to applicant’s email communication with the examining attorney on September 8, 2014.

 

In a previous Priority Action dated August 5, 2014, the trademark examining attorney advised the applicant of the following issues and requirements:

 

1.               Potential Section 2(d) Likelihood of Confusion Refusal

2.               Claim of Prior Registration Requirement

 

After issuance of the Examiner’s Amendment below, the potential Section 2(d) likelihood of confusion refusal will be WITHDRAWN and the claim of prior registration requirement will be SATISFIED. 

 

APPLICATION HAS BEEN AMENDED:  In accordance with the authorization granted by Daniel Marks on September 8, 2014, the trademark examining attorney has amended the application as indicated below.  Please advise the undersigned immediately of any objections.  Otherwise, no response is necessary.  TMEP §707.  Any amendments to the identification of goods may clarify or limit the goods, but may not add to or broaden the scope of the goods.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq.

 

Amendment to the Identification of Goods

 

The identification of goods is amended to read as follows: 

 

“Protective helmets, excluding hard hats and head guards for industrial use” in International Class 009. 

 

See TMEP §§1402.01, 1402.01(e).

 

Claim of Prior Registration

 

The following claim of ownership is added to the record:

 

            Applicant is the owner of U.S. Registration No. 4057966.

 

See 37 C.F.R. §2.36; TMEP §812.

 

WHAT HAPPENS NEXT

 

After issuance of an examiner’s amendment, the trademark examining attorney will usually approve the mark for publication in the Official Gazette, a weekly publication of the USPTO.  The USPTO will then send a “Notice of Publication” to the applicant specifying the date of publication. 

 

The purpose of publishing applicant’s mark in the Official Gazette is to provide an opportunity to third parties who believe they may be damaged by registration of applicant’s mark to oppose its registration within thirty (30) days from the publication date.  An “opposition” is similar to a federal court proceeding, but this proceeding is held before the Trademark Trial and Appeal Board, a USPTO administrative tribunal of administrative judges who issue decisions on such matters.  If an opposition proceeding is instituted to oppose registration of applicant’s mark, applicant will receive notice.  In such cases, due to the complexity of such matters, applicant may wish to hire an attorney.

 

If the mark is published based upon the actual use of the mark in commerce, or based on a foreign registration, and no party opposes its registration, the USPTO will normally register the mark and issue a registration certificate within approximately twelve (12) weeks after the date the mark was published.

 

If the mark is published based upon the applicant’s bona fide intention to use the mark in commerce, the USPTO will issue a “Notice of Allowance” within approximately eight (8) weeks after the date the mark was published, if no party files an opposition.  Applicant then has six (6) months from the date of the Notice of Allowance to timely file a “Statement of Use” or to file a request for a six-month “Extension of Time to file a Statement of Use.”  Extension requests are granted for six-month increments and a maximum of five extension requests can be filed after the issuance of the Notice of Allowance.  If not filed within the six months after the Notice of Allowance issued, a Statement of Use must be filed within the time period of a previously granted extension of time.

 

Forms for extension requests and Statements of Use are available online at http://www.uspto.gov/trademarks/teas/intent_to_use.jsp.  For more information about the additional requirements for intent to use applications, visit the USPTO website.  Only after a Statement of Use is approved by the trademark examining attorney will the USPTO issue a registration certificate.

 

ASSISTANCE

 

If applicant has any additional questions or needs further assistance, please telephone the assigned trademark examining attorney.

 

 

 

/Brin Anderson Desai/

Brin Anderson Desai

Trademark Examining Attorney

Law Office 113

571-272-6399

Brin.Desai@uspto.gov

 

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 Trademark Electronic Application System (TEAS) form at http://www.uspto.gov/trademarks/teas/correspondence.jsp.