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: 11/16/2015

 

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 for Conflicting 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).

 

Requirement  --  Inquiry  --  Unclear if Repeating Pattern Unintended

 

To permit proper examination of the application, applicant must submit additional information about the goods and/or services.  See 37 C.F.R. §2.61(b); In re AOP LLC, 107 USPQ2d 1644, 1650-51 (TTAB 2013); In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004); TMEP §§814, 1402.01(e).

 

Specifically, it is unclear from the drawing and the mark description whether or not the applicant’s mark is a “repeating pattern” trademark.  A repeating-pattern mark is any mark composed of a single repeated element or a repeated combination of designs, numbers, letters, or other characters, forming a pattern that is displayed on the surface of goods, on product packaging, or on materials associated with the advertising or provision of services.  The pattern may appear over the entire surface of the relevant item or on just a portion of it.  In a repeating-pattern mark, the repetition of the mark’s elements is a feature of the mark, which must be appropriately specified in the application. 

 

A repeating pattern that is unique when used in connection with the relevant goods or services may be inherently distinctive.  However, because of the ornamental and typically nondistinctive nature of repeating patterns, consumers often do not perceive these patterns as source indicators, in which case they may not be registered on the Principal Register without proof of acquired distinctiveness.  See Repeating-Pattern Marks, Examination Guide 1-15 (June 2015), available at http://www.gov.uspto.report/trademark/guides-and-manuals/trademark-examination-guides.

 

As such, the applicant must state for the record whether or not its wave design is intended to be a repeating pattern mark. 

 

Failure to comply with a request for information can be grounds for refusing registration.  In re AOP LLC, 107 USPQ2d at 1651; In re DTI P’ship LLP, 67 USPQ2d 1699, 1701-02 (TTAB 2003); TMEP §814.  Merely stating that information about the goods or services is available on applicant’s website is an inappropriate response to a request for additional information and is insufficient to make the relevant information of record.  See In re Planalytics, Inc., 70 USPQ2d at 1457-58.

 

If the mark is intended to be a repeating pattern mark, please see the additional drawing and description requirements below.

 

Conditional Refusal – Swatch Drawing – Application Seeks Registration of More than One Mark

 

If applicant seeks registration for a repeating pattern mark, registration is refused because applicant seeks registration of more than one mark in its application.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; TMEP §1214.01.  An application must be limited to only one mark.  37 C.F.R. §2.52; TMEP §§807.01, 1214.01; see 15 U.S.C. §1051(a)(1), (b)(1); In re Int’l Flavors & Fragrances Inc., 183 F.3d 1361, 1366, 51 USPQ2d 1513, 1516 (Fed. Cir. 1999).

 

In the present case, the mark drawing consists of a “swatch” showing the applied-for repeating-pattern mark within a square, rather than depicting the pattern’s particular placement on an item.  Generally, swatch-type drawings do not adequately depict the nature of repeating patterns, because the commercial impression of these patterns may change depending on the nature of the pattern, the type of item the pattern appears on, the particular placement of the pattern on that item, and the size and scale of the elements in the pattern as applied.  Thus, a swatch-type drawing may encompass more than one mark and each mark may create a different commercial impression.   

 

Accordingly, a swatch-type drawing is acceptable only when an applicant has submitted sufficient evidence to establish that the mark is applied to various items but that these various uses of the repeating pattern nonetheless create the same commercial impression.  In the absence of this evidentiary showing, swatch-type drawings of repeating patterns, such as the mark drawing here, are deemed to encompass more than one mark.  See Repeating-Pattern Marks, Examination Guide 1-15 (June 2015), available at http://www.gov.uspto.report/trademark/guides-and-manuals/trademark-examination-guides; cf. In re Upper Deck Co., 59 USPQ2d 1688, 1689-91 (TTAB 2001) (holding unregistrable a mark comprising a hologram on a trading card when the hologram may have a myriad of shapes, sizes, contents and the like); In re Elvis Presley Enters., 50 USPQ2d 1632, 1633-34 (TTAB 1999) (holding unregistrable a mark comprising all likenesses and images of one particular person in all possible manners of presentation without limitation as to age, manner of dress, or pose).

 

Because applicant has submitted a swatch-type mark drawing that encompasses more than one mark, and has not provided evidence that the mark, as applied to the various identified goods, would create the same commercial impression, registration is refused.  See 15 U.S.C. §§1051, 1127.

 

Applicant may respond by satisfying one of the following response options, as appropriate:

 

(1)  Amend the mark drawing to depict the repeating-pattern mark as it appears on a particular item encompassed by the identification of goods, and amend the mark description accordingly.  The drawing must show the precise placement of the pattern on the particular item, which may be on only a portion of the item or over the entire surface of the item.  The shape of the item must appear in broken lines to indicate that it is not claimed as part of the mark.  37 C.F.R. §2.52(b)(4); TMEP §807.08.  The mark description must indicate that the mark consists of a pattern, specify how the pattern will appear on the relevant item, and describe any portions of the mark that are shown in broken lines and thus are not claimed as a feature of the mark.  See TMEP §§807.08, 808.02.  If necessary, amend the identification to delete goods that are inconsistent with the item appearing in the amended mark drawing.  See Repeating-Pattern Marks, Examination Guide 1-15 (June 2015), available at http://www.gov.uspto.report/trademark/guides-and-manuals/trademark-examination-guides; cf. TMEP §§1202.02(f)(i), 1202.02(f)(ii).  

 

(2)  Submit evidence that (i) the applied-for mark is used, or will be used, in various ways or on a variety of items, but (ii) it will nonetheless be perceived as a source indicator and create the same commercial impression across all uses.  The evidence of variable use referred to in (i) above need not show every use of the repeated pattern on the relevant items, but it should establish that the use (or intended use) of the mark in connection with the identified goods or services is so varied that a single depiction of the mark on a particular item would not accurately reflect the nature of the mark.  This may include declarations, marketing materials, and other similar matter.  The evidence as to the commercial impression referred to in (ii) above must be substantial and must establish that the pattern will be perceived as a source indicator and create the same commercial impression in the minds of consumers.  Relevant evidence may include consumer declarations; advertisements or other materials showing various instances of the pattern being used together in one place (e.g., a single advertisement that shows the pattern being used in various ways on various goods, but nonetheless projecting the same commercial impression); sales figures relevant to the various items featuring the pattern; and any other evidence of the applicant’s efforts to promote the various uses of the repeating pattern as a single source indicator for the relevant goods or services, including “look-for”-type evidence.  See Repeating-Pattern Marks, Examination Guide 1-15 (June 2015), available at http://www.gov.uspto.report/trademark/guides-and-manuals/trademark-examination-guides.

 

For these reasons, registration is refused under Sections 1 and 45 of the Trademark Act.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

 

If applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.

 

Requirement  --  Description of the Mark

 

The description of the mark uses broad, vague language that does not accurately describe the applied-for mark.  Applications for marks not in standard characters must include an accurate and concise description that identifies all literal elements as well as any design elements in the mark.  See 37 C.F.R. §2.37; TMEP §808.02.  Further, applications for repeating pattern marks must specify that the pattern is repeating and specify how the pattern will appear on the relevant items, i.e., only to a portion of the relevant goods, packaging or other items, or to the entire surface.  The mark description must also describe any portions of the mark that are shown in broken lines and thus are not claimed as a feature of the mark, and, if the mark features color, an appropriate color claim and description referencing the locations where the colors appear.  Repeating-Pattern Marks, Examination Guide 1-15 (June 2015), available at http://www.gov.uspto.report/trademark/guides-and-manuals/trademark-examination-guides

 

Therefore, applicant must provide a more detailed description of the applied-for mark.  The following is suggested:

 

The mark consists of a series of overlapping fan-shaped waves appearing in a repeating pattern applied to the surface of the goods.  The shape of the goods is shown in dotted lines and is not claimed as a feature of the mark.           

 

TEAS Plus Requirements

 

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.

 

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).

 

Responses to Office actions must be properly signed.  See 37 C.F.R. §§2.62(b), 2.193(e)(2); TMEP §§712, 712.01.  Where an applicant is represented by an attorney, the attorney must sign the response.  37 C.F.R. §2.193(e)(2)(i); TMEP §§611.03(b), 712.01.  The only attorneys who may sign responses and otherwise practice before the USPTO in trademark matters are (1) attorneys in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and other federal territories and possessions of the United States; and (2) Canadian agents/attorneys who represent applicants located in Canada and (a) are registered with the USPTO and in good standing as patent agents or (b) have been granted reciprocal recognition by the USPTO.  See 37 C.F.R. §§2.17(e), 2.62(b), 11.1, 11.5(b)(2), 11.14(a), (c); TMEP §§602, 712.01.  Attorneys who fail to meet these requirements, as well as non-attorneys, are generally not permitted to represent applicants in trademark matters before the USPTO; and thus, they may not sign responses.  See 5 U.S.C. §500(b), (d); 37 C.F.R. §11.14(a)-(c), (e); TMEP §§602, 602.02, 608.01. 

 

Applicant may wish to hire an attorney to assist in prosecuting this application because of the legal technicalities involved.  The Office, however, cannot aid in the selection of an attorney.  37 C.F.R. §2.11.  Applicant may wish to consult a local telephone directory for a listing of attorneys specializing in trademark or intellectual property law, or seek guidance from a local bar association attorney-referral service.

 

Where an applicant is not represented by an attorney, the response must be signed by the individual applicant or someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner).  See 37 C.F.R. §2.193(e)(2)(ii); TMEP §§611.03(b), 611.06 et seq., 712.01.  In the case of joint applicants, all must sign.  37 C.F.R. §2.193(e)(2)(ii); TMEP §611.06(a).

 

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 §§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.

 

 

 

 

 

/Michael P. Keating/

Trademark Attorney

Law Office 101

571-272-9177

Michael.Keating@uspto.gov (informal inquiries only)

 

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 11/16/2015 FOR U.S. APPLICATION SERIAL NO. 86796057

 

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 11/16/2015, 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 P. Keating/

Trademark Attorney

Law Office 101

571-272-9177

Michael.Keating@uspto.gov (informal inquiries only)

 

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.