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.  A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.

 

ISSUE/MAILING DATE: 4/11/2017

 

TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE:  Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application.  See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820.  TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services.  37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04.  However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring 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.

 

This Office action is in response to applicant’s communication filed on March 13, 2017.

 

Refusal

 

Registration has been refused because the proposed mark is primarily merely a surname.  Trademark Act § 2(e)(4).  Such is here repeated. 

 

Applicant seeks to register the proposed mark “DYSON” for batteries; electric batteries; rechargeable batteries; battery chargers; batteries, electric batteries, rechargeable batteries, battery chargers, all for domestic appliances; batteries, electric batteries, rechargeable batteries, battery chargers, all for cordless, handheld or robotic vacuum cleaners.  A claim of distinctiveness for the proposed mark based upon U.S. Trademark Registrations for the same mark and related goods has been submitted in order to overcome the refusal to register.  Trademark Act § 2(f).  To this end, applicant relies, in part, on U.S. Trademark Registration no. 4,020,756 for the mark “DYSON” for batteries and a variety of related goods.  But the mark is registered on the Supplemental Register.

 

It is called to applicant’s attention that a claim of distinctiveness based upon a subsisting U.S. Trademark Registration for the same mark and related goods must be registered on the Principal Register.  Trademark Rule § 2.41(b).  A claim of distinctiveness of a mark based upon a Supplemental Register registration cannot be accepted.  See: In re Canron, Inc., 219 USPQ 820, 822n.2 (TTAB, 1983).  Correspondingly, the claim of distinctiveness based upon the claimed registration is unacceptable and must be deleted. 

 

Applicant has also asserted that the proposed mark has become distinctive based upon U.S. Trademark Registration no. 3,495,149 registered on the Principal Register for the mark “DYSON” for apparatus for cleaning floors and carpets, namely, vacuum cleaners; floor tools for vacuum cleaners, namely, floor tool cleaner heads and brushes; separation apparatus, namely, separators for removing dust and debris from the airflow in vacuum cleaners; hoses and filters for vacuum cleaners and parts and fittings for all the aforesaid goods.  Since these goods are related goods to some of the goods in this application, that is, batteries, electric batteries, rechargeable batteries, battery chargers, all for domestic appliances; batteries, electric batteries, rechargeable batteries, battery chargers, all for cordless, handheld or robotic vacuum cleaners, the claim of distinctiveness for the mark for those goods will be accepted.  However, since the batteries, electric batteries, rechargeable batteries, and battery chargers are not related to the domestic appliances, the claim of distinctiveness for the mark for those goods must be denied.  Batteries, electric batteries, rechargeable batteries, and battery chargers may be used for a variety of purposes unrelated to domestic appliances, which are the goods listed in the claimed trademark registration.  For example, there are flashlight batteries, hearing aid batteries, and automobile batteries for which the claimed registration would not be accepted as evidence of distinctiveness.

 

Applicant is requested to restrict the recitation of goods to be: batteries, electric batteries, rechargeable batteries, battery chargers, all for domestic appliances; and batteries, electric batteries, rechargeable batteries, battery chargers, all for cordless, hand-held or robotic vacuum cleaners.

 

Further, if the goods are so restricted and the batteries, electric batteries, rechargeable batteries, and battery chargers are deleted, the claim of distinctiveness will be accepted.

 

In addition, it is suggested that applicant submit the following statement in order to clarify which registration is claimed to be the basis of the claim of distinctiveness:

 

The mark has become distinctive of the goods as evidenced by the ownership of active U.S. Registration No. 3,495,149 on the Principal Register for the same mark for sufficiently similar goods.

 

TMEP §1212.04(e); see 37 C.F.R. §2.41(a)(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.

 

TRADEMARK FEES:  Effective January 14, 2017, the USPTO increased fees for all trademark applications and related documents filed on paper.  See 81 Fed. Reg. 72694 (Oct. 21, 2016) (codified at 37 C.F.R. parts 2 and 7).  Additionally, the USPTO increased the filing fee for each class of goods or services in a regular Trademark Electronic Application System (TEAS) application and the per class processing fee for a TEAS Plus or TEAS RF application that does not meet the relevant filing requirements.  Id.  Trademark applications and related documents filed on or after January 14, 2017 must comply with the new fees.  See more information for an overview of the changes.  See the fee chart that lists all trademark fee changes.

 

 

 

/David C. Reihner/

Examining Attorney

Law Office 111, 571-272-9392

571-272-9111, fax.

David.Reihner@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 4/11/2017 FOR U.S. APPLICATION SERIAL NO. 86636024

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click 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)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 4/11/2017 (or sooner if specified in the Office action).  A response transmitted through the Trademark Electronic Application System (TEAS) must be received before midnight Eastern Time of the last day of the response period.  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.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.  Instead, the USPTO recommends that you respond online using the TEAS response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@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.