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: 10/16/2014

 

 

 

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.

 

 

Search Results

 

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).

 

 

 

Drawing – Description Clarification

 

The applicant appears to have submitted a new drawing on 09/12/2014.  For purposes of clarification of terminology, the Office defines a “drawing” as what the trademark consists of or looks like.  In non-legal parlance, a trademark or service mark can be thought of as the “logo” or “brand” of goods and services.  The applicant uploaded the new image of the term “SYNC” as both a “drawing” and a “specimen”.  A drawing and a specimen are not the same thing.  The Office considers a “specimen” to be something such as a label, tag, or packaging that bear the mark and are used on or in connection with the goods.  For example, in this case, the term “SYNC” in stylized orange letters is the trademark and the uploaded image is the “drawing”.  A box for the applicant’s goods or a label on such packaging showing the mark would be a “specimen”.

 

From this, the applicant should confirm whether or not the submission of  09/12/2014 is intended as a new drawing of the applied for mark.  If so, the applicant should provide a clear and succinct mark description.  The following is recommended:

 

The mark consists of the term “SYNC” in stylized form and in the color reddish-orange.

 

 

Filing Basis Clarification

 

 

The applicant initially filed the application based on an “intent to use” the mark in commerce.  This filing basis is 1(b).  In the submission of 09/12/2014 the applicant provides dates of use of 09/08/2014 and 09/09/2014.  The applicant must clarify what these dates represent.  Is this when the overall design of the mark was changed?  Or has the applicant started using the mark on its goods i.e. starting selling the products?  If the former, that information is not required and because it is potentially confusing with regard to using the mark in commerce, it should be withdrawn.  If the latter, note the following:

 

Applicant cannot amend an intent-to-use application filed under Trademark Act Section 1(b) to assert a use in commerce basis under Section 1(a) unless applicant also files an allegation of use.  15 U.S.C. §1051(b)-(d); 37 C.F.R. §2.35(b)(8); TMEP §806.03(e).  An allegation of use must include dates of first use, a specimen showing actual use of the mark in commerce for each international class, and a fee, among other requirements.  37 C.F.R. §§2.6, 2.76, 2.88; TMEP §§806.01(b), 1103.  In addition, certain time restrictions apply to filing allegations of use.  See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76(a), 2.88(a); TMEP §§1104.03, (b), 1109.04. 

 

Allegations of use can be filed electronically using the Trademark Electronic Application System (TEAS) at http://www.uspto.gov/trademarks/teas/intent_to_use.jsp.

 

 

 

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.  

 

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.

 

 

 

 

 

/Karen Bracey/

Karen Bracey

Examining Attorney

Law Office 116

571-272-9132

karen.bracey@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.