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: 5/25/2016

 

 

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 $50 per international 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 without incurring this additional fee. 

 

 

The statement of use 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.

 

 

Specimen(s) Submitted with Statement of Use Is/Are Unacceptable

 

Registration is refused because the specimen does not show the applied-for mark in use in commerce in International Class(es) 34.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a). 

 

An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of goods identified in the application or Statement of Use.  15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).

 

The specimen states in the identification that the goods are “electronic cigarettes.”  However, the specimen states that the goods are temperature control devices for e-cigarettes.  A specimen for goods must specify the goods in the identification.

 

Examples of specimens for goods include tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, and displays associated with the actual goods at their point of sale.  See TMEP §§904.03 et seq.  Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods.  TMEP §904.03(i).  However, leaflets, handbills, advertising circulars, and other advertising materials generally are not acceptable specimens for goods.  See TMEP §§904.03 et seq.

 

Applicant must respond to this refusal by satisfying the following:

 

(1)  Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce prior to the expiration of the time allowed applicant for filing a statement of use, and (b) shows the mark in actual use in commerce for the goods identified in the application. 

 

(2)  The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: "The substitute specimen was in use in commerce prior to the expiration of the time allowed applicant for filing a statement of use." 37 C.F.R. §2.59(b)(2); TMEP §904.05. If submitting a specimen requires an amendment to the dates of use, applicant must also verify the amended dates. 37 C.F.R. §2.71(c).

 

Declaration/Verification for Substitute Specimen(s)

 

The following describes how to submit a declaration/verification for substitute specimen(s) via TEAS.  Please note, if applicant has filed a TEAS Plus application, the applicant must submit the substitute specimen(s) and the accompanying declaration/verification for substitute specimen(s) via TEAS. 

 

The following is a sample declaration for a verified substitute specimen for use in a paper response:

 

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 submission or any registration resulting therefrom, declares that the substitute specimen was in use in commerce prior to the expiration of the time for filing a statement of use; all statements made of his/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)

 

 

 

Declaration/Verification If Submission of Substitute Specimen(s) Requires Amendment to the Date(s) of First Use

 

If submitting a substitute specimen requires an amendment to the dates of use, applicant must verify the amended dates with an affidavit or signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.71(c); TMEP §904.05; see 37 C.F.R. §2.193(e)(1).

 

The undersigned 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 document or any registration resulting therefrom, declares that he/she is properly authorized to execute this application on behalf of the applicant; the applicant has been using the mark anywhere as early as [LIST THE DATE OF FIRST USE ANYWHERE] and in commerce as early as [LIST THE DATE OF FIRST USE IN COMMERCE]; and that all statements made of his/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)

 

 

 

 

 

 

 

Each Joint Applicant Must Sign the Statement of Use

 

The declaration submitted in support of the Statement of Use is not acceptable because it omits some or all the verified statements required under37 C.F.R. §2.88(b)(1) for a Statement of Use.  TMEP §1109.11(b).  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(a)(3); 37 C.F.R. §§2.88(b)(1), (c)(3), 2.193(e)(1); TMEP §1109.11(b).

 

When joint applicants filed a trademark application, each joint applicant must sign this communication to the USPTO.  See 37 C.F.R. §§2.62(b), 2.193(e)(2); TMEP §611.06(a).  See also, TMEP §§611.03(a) and 804.04.

 

In this case, this applicant has four joint owners:  Michael Chen, Billy Chen, Wein Wei, Donald Giang.  Only Michael Chen signed and dated the Statement of Use.  Each of the other joint applicants must sign and date the verified statements and a declaration for the Statement of Use.

 

 

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.

 

 

Statement of Use May Not Be Withdrawn

 

Applicant may not withdraw the statement of use.  37 C.F.R. §2.88(g); TMEP §1109.17.

 

 

 

Only If Applicable - Examiner’s Amendment Recommended

 

Examiner’s Amendments cannot be issued for partial amendments.  However, if all of the  outstanding issues can be resolved through an Examiner’s Amendment, the applicant is encouraged to respond to this Office Action by amending the application in a telephone call with the examining attorney to expedite the processing of the application.  Generally, only the submission of arguments to overcome a substantive refusal or an informal requirement, a requirement for the submission of specimens, a particular document or declaration, or the payment of a fee cannot be handled over the telephone.

 

Questions Regarding This Office Action

 

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.

 

 

Responding to Office Action

 

The USPTO applies the following legal authorities when processing a trademark and/or service mark application: 

 

• The Trademark Act of 1946, as amended
• The Trademark Rules of Practice, as amended
• Precedential court and Trademark Trial and Appeal Board decisions
• The USPTO’s Trademark Manual of Examining Procedure (TMEP), as periodically updated
• The USPTO’s Trademark Trial and Appeal Board Manual of Procedure (TBMP), as periodically updated 

 

See 15 U.S.C. §§1051 et seq.; 37 C.F.R. pts. 2, 3, 6, 7, 11; TMEP intro., §§101, 107, 110. 

 

Official USPTO letters and notices sent to applicants generally refer to one or more of these legal resources.  Both the Trademark Act and Trademark Rules of Practice can be viewed online at http://www.gov.uspto.report/trademarks/law/index.jsp.  The TMEP is available online at http://www.gov.uspto.report/trademarks/resources/index.jsp and the TBMP and Trademark Trial and Appeal Board decisions are available online at http://www.gov.uspto.report/trademarks/process/appeal/index.jsp.

 

 

Please note that applicant must explicitly address all issues raised in this Office Action.  If the issues are substantive refusals, the applicant may respond with arguments and evidence to overcome the refusal.  To respond to requirements/informalities the applicant must specifically request that changes to the record be made.

 

There is no required format or form for responding to an Office Action.  The Office recommends applicants use the Trademark Electronic Application System (TEAS) to respond to Office Actions online at http://www.gov.uspto.report/teas/index.html.  TO RESPOND TO THIS LETTER VIA TEAS:  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. 

 

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. 

 

Applicant should provide a current telephone number with its response to expedite processing.  TMEP §302.03(a).

 

If applicant responds on paper via regular mail, applicant should include the following information on all correspondence with the Office:  (1) the name and law office number of the trademark examining attorney, (2) the serial number and filing date of the application, (3) the date of issuance of this Office action, (4) applicant’s name, address, telephone number and e-mail address (if applicable), and (5) the mark.  37 C.F.R. §2.194(b)(1); TMEP §302.03(a).

 

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.

 

 

 

 

 

 

 

/Michael A. Wiener/

Trademark Attorney

Law Office 108

(T): (571) 272-8836

E-Mail (unofficial correspondence only):

michael.wiener@uspto.gov

 

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 5/25/2016 FOR U.S. APPLICATION SERIAL NO. 86649317

 

Your trademark application has been reviewed.  The trademark examining attorney assigned by the USPTO to your application has written an official letter to which you must respond.  Please follow these steps:

 

(1)  Read the LETTER by clicking on this link or going to http://tsdr.gov.uspto.report/, entering your U.S. application serial number, and clicking 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)  Respond within 6 months (or sooner if specified in the Office action), calculated from 5/25/2016, using the Trademark Electronic Application System (TEAS) response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.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. 

 

(3)  Questions about the contents of the Office action itself should be directed to the trademark examining attorney who reviewed your application, identified below. 

 

/Michael A. Wiener/

Trademark Attorney

Law Office 108

(T): (571) 272-8836

E-Mail (unofficial correspondence only):

michael.wiener@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.