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: 11/14/2015

 

This Office action is in response to applicant’s communication filed on October 5, 2015.  Applicant responded with an amended drawing.  However, the amended drawing is materially different from the drawing as filed and therefore, for the reasons stated below, is unacceptable.  The refusal of registration under Section 2(d) of the Trademark Act as to Registration No. 4047299 is maintained.

 

Amended Drawing Unacceptable-Material Alteration

Applicant has requested that the drawing of the mark be amended.  The original drawing shows the mark as consisting of a blue shield design inside of which is the stylized wording “ARMOR” in all capital letters in white and below the shield is the stylized wording “PEST DEFENSE” in all capital letters and in black; the proposed amended drawing shows the mark as consisting of a blue shield design inside of which is the stylized wording “ARMOR” in all capital letters and in white.

 

An amendment to a mark will not be accepted if the change would materially alter the mark in the initial application.  37 C.F.R. §2.72; TMEP §807.14.  Determining whether a proposed amendment materially alters a mark involves comparing the proposed amended mark with the mark in the drawing filed with the original application.  37 C.F.R. §2.72; TMEP §807.14(d). 

 

The test for material alteration is whether the modified mark retains what is the essence of the original mark; that is, whether the new and old forms create the impression of being essentially the same mark.  In re Hacot-Columbier, 105 F.3d 616, 620, 41 USPQ2d 1523, 1526 (Fed. Cir. 1997) (quoting Visa Int’l Serv. Ass’n v. Life Code Sys., Inc., 220 USPQ 740, 743 (TTAB 1983)); see In re Nationwide Indus. Inc., 6 USPQ2d 1882, 1885 (TTAB 1988); TMEP §807.14.  For example, if republication of the amended mark would be necessary to provide proper notice of the mark to third parties for opposition purposes, then the mark has been materially altered and the amendment is not permitted.  In re Hacot-Columbier, 105 F.3d at 620, 41 USPQ2d at 1526 (quoting Visa Int’l Serv. Ass’n v. Life Code Sys., Inc., 220 USPQ at 743-44).  Also, the addition of an element that would require a further search may be a factor in determining material alteration.  In re Guitar Straps Online, LLC, 103 USPQ2d 1745, 1747 (TTAB 2012); In re Who? Vision Sys. Inc., 57 USPQ2d 1211, 1218 (TTAB 2000).

 

In the present case, the proposed amendment to the mark is refused because it would result in a material alteration of the mark depicted in the original application.  TMEP §807.17; see 37 C.F.R. §2.72; In re Who? Vision Sys., Inc., 57 USPQ2d 1211 (holding proposed amendment from “TACILESENSE” to “TACTILESENSE” to be material alteration due to the difference in meaning or connotation between the marks); In re CTB Inc., 52 USPQ2d 1471 (TTAB 1999) (holding proposed amendment of TURBO and design to the typed word TURBO to be a material alteration due to the design being distinctive matter). 

 

Specifically, the proposed amendment would materially alter the mark in the initial application because the wording “PEST DEFENSE” that appears in the drawing as filed is not part of the amended drawing and that changes the overall impression of the mark in material way by leaving out wording that is suggestive of the nature or type of services.

 

Accordingly, the proposed amendment will not be entered; the previous drawing of the mark will remain operative.  TMEP §807.17. 

 

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 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).

 

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. §§2.62(c), 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.

 

 

 

/DominicJFerraiuolo/

Examining Attorney, U.S.P.T.O.

Law Office 102

tel:  571-272-9156

fax: 571-273-9102

email: dominic.ferraiuolo@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.