To: | Swinerton Incorporated (trademarks@sedgwicklaw.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 86702888 - SOLV - 01412-081173 |
Sent: | 11/4/2015 2:37:46 PM |
Sent As: | ECOM110@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 86702888
MARK: SOLV
|
|
CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
|
APPLICANT: Swinerton Incorporated
|
|
CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
|
OFFICE ACTION
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: 11/4/2015
SEARCH OF OFFICE’S DATABASE OF MARKS
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 IS IN COLOR – NO COLOR CLAIM
Applicant must clarify whether color is a feature of the mark because, although the drawing shows the mark in color, the application states that color is not claimed as a feature of the mark. Applications for marks depicted in color must include not only a color drawing but also (1) a complete list of all the colors that are claimed as a feature of the mark and (2) a description of the literal and design elements in the mark that specifies where the colors appear in those elements. 37 C.F.R. §§2.37, 2.52(b)(1); see TMEP §807.07(a)-(a)(ii).
Therefore, applicant must clarify whether color is claimed as a feature of the mark by satisfying one of the following:
(1) If color is not a feature of the mark, applicant must submit a substitute black-and-white drawing of the mark to replace the color drawing of record. See TMEP §807.07(a)(i). However, any other amendments to the mark included in the substitute drawing will not be accepted if the changes would materially alter the mark. 37 C.F.R. §2.72; see TMEP §§807.14 et seq. The current description of the mark is acceptable for a black and white drawing.
(2) If color is a feature of the mark, applicant must submit both (a) a statement listing all the colors that are claimed as a feature of the mark and (b) a statement describing the literal and design elements in the mark that specifies where the colors appear in those elements. 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §807.07(a)-(a)(ii). Generic color names must be used to describe the colors in the mark, e.g., magenta, yellow, turquoise. TMEP §807.07(a)(i)-(ii). If black, white, and/or gray are not being claimed as a color feature of the mark, applicant must exclude them from the color claim and include in the mark description a statement that the colors black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark. See TMEP §807.07(d). The following color claim and mark description are suggested, if accurate:
Color claim: “The colors blue is claimed as a feature of the mark.”
Mark description: The mark consists of the stylized wording "solv" inside a rectangle. Inside the rectangle and to the left of the stylized wording "solv" is a curved vertical line. Both the design and wording appear in blue.
IF COLOR IS CLAIMED IN THE MARK THE FOLLOWING APPLIES
SPECIMENS DO NOT MATCH THE DRAWING PAGE
The drawing shows the mark sought to be registered, and must be a substantially exact representation of the mark as used on or in connection with the goods and/or services, as shown by the specimen. 37 C.F.R. §2.51(a); TMEP §807.12(a). Because the mark in the drawing is not a substantially exact representation of the mark on the specimen, applicant has failed to provide the required evidence of use of the applied-for mark in commerce on or in connection with applicant’s goods and/or services. See TMEP §807.12(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 and/or services identified in the application or amendment to allege 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).
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). Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and webpages that show the mark used in the actual sale, rendering, or advertising of the services. See TMEP §1301.04(a), (h)(iv)(C).
Applicant may respond to this refusal by satisfying one of the following for each applicable international class:
(1) Submit a new color drawing of the mark, which agrees with the colors of the mark on the specimen and does not materially alter the original mark, and, if appropriate, an amendment to the color claim and/or mark description that conforms to the new drawing.
(2) Submit a new black-and-white drawing of the mark, with a statement authorizing the deletion of any color claim and an amendment of the mark description deleting any reference to color.
(3) Submit a different specimen (a verified “substitute” specimen) showing the applied-for mark in use in commerce in the colors depicted on the drawing at least as early as the filing date of the application or prior to the filing of an amendment to allege use.
For an overview of all the response options referenced above and instructions on how to satisfy these options online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/J3_2.jsp .
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
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.
/Rebecca Smith/
Rebecca A. Smith
Trademark Attorney
Law Office 110
571-272-9223
rebecca.smith6@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.