To: | Automattic Inc. (iplaw@maryshapiro.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 86796589 - AUTOMATTIC - 000602US-Aut |
Sent: | 6/1/2016 6:01:38 PM |
Sent As: | ECOM121@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 86796589
MARK: AUTOMATTIC
|
|
CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
|
APPLICANT: Automattic Inc.
|
|
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: 6/1/2016
This Office action supersedes the previous Office action issued on February 19, 2016 in connection with this application.
Applicant must address all issues raised in this Office action. The issue raised in the previous February 19, 2016 Office action regarding the signature on the declaration is maintained. While applicant submitted a signature, applicant did not include the boilerplate declaration language. Without this language, the declaration is incomplete. This Office action raises a new requirement regarding applicant’s color claim. The USPTO apologizes for not making the color claim requirement clear in the previous Office action.
Further, the requirement regarding applicant’s mark description has been satisfied. See TMEP §713.02.
Applicant must respond to all issues raised in this Office action within six (6) months of the date of issuance of this Office action. 37 C.F.R. §2.62(a). If applicant does not respond within this time limit, the application will be abandoned. 37 C.F.R. §2.65(a).
Summary of Issues:
Color Claim Must be Amended
The following color claim is suggested, if accurate:
Color claim: “The colors blue and black are claimed as a feature of the mark.”
Applicant Must Submit Signed Declaration – Use
The application was not signed and verified properly, which are application requirements. See 15 U.S.C. §1051(a); 37 C.F.R. §§2.33(a)-(b)(1), 2.34(a)(1)(i). Specifically, electronic signatures are unacceptable in the format that applicant provided. Additionally, if applicant provides a pen-and-ink signature, applicant must also provide the declaration language. 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. §§2.33(a)-(b)(1), 2.34(a)(1)(i), 2.193(e)(1); TMEP §§804.02, 806.01(a).
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.
To respond to this requirement on paper, via regular mail, applicant may provide the following statements and declaration at the end of the response, personally signed by a person authorized under 37 C.F.R. §2.193(e)(1) and dated, with the printed or typed name of the signatory appearing immediately below the signature. See 37 C.F.R. §§2.20, 2.33(a)-(b)(1), 2.34(a)(1)(i), 2.193(a), (d); TMEP §§611.01(b), 804.01(b). The signatory’s particular title or position should also be specified. See TMEP §804.04.
STATEMENTS: The signatory believes that: the applicant is the owner of the mark; the mark is in use in commerce and was in use in commerce as of the application filing date; the original specimen(s), if applicable, shows the mark as used on or in connection with the goods and/or services as of the application filing date; and to the best of the signatory’s knowledge and belief, no other person has the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when applied to the goods and/or services of such other person, to cause confusion or mistake, or to deceive.
DECLARATION: 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 any registration resulting therefrom, declares that all statements made of his or 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)
To properly sign an online form in the Trademark Electronic Application System (TEAS), applicant may use one of the following methods:
(1) SUBMIT E-SIGNATURE: The signer types in the signature block any combination of letters, numbers, spaces, and/or punctuation marks that the signer has adopted as a signature, placed between two forward slash (/) symbols (e.g., /john doe/). If the filer is not the actual signer of the form, the filer may e-mail the completed form from within TEAS to the signer to enter his or her direct e-signature, after which the form will be automatically returned to the filer for submission to the USPTO.
(2) ATTACH FILE OF PEN-AND-INK SIGNATURE: The filer prints the completed form in text format and mails or faxes it to the signatory who reviews the document and then signs the printed form in the traditional pen-and-ink manner. The signature portion, along with a declaration, if required, is then scanned to create a jpg or pdf image file and attached to the TEAS form for submission (emphasis added).
See 37 C.F.R. §2.193(c); TMEP §611.01(c).
Regardless of the selected method for signing the form, the signer must personally sign or personally enter his or her signature. See 37 C.F.R. §2.193(a); TMEP §§611.01(c), 611.02. The name of the signer must also be clearly printed or typed near the signature. 37 C.F.R. §2.193(d); TMEP §611.01(c). The signer’s particular title or position should also be specified. See TMEP §804.04.
Response Guidelines
For this application to proceed further, 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 specified in this Office action for responding to a refusal, and should consider those options carefully. To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements.
In addition, because applicant filed a TEAS RF application, applicant must respond online using the Trademark Electronic Application System (TEAS) to avoid incurring an additional fee. See 37 C.F.R. §2.23(b)(1), (c). For more information and general tips on responding to USPTO Office actions, response options, and how to file a response online, see “Responding to Office Actions” on the USPTO’s website.
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 and the trademark will fail to register. See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a); TMEP §§718.01, 718.02. Additionally, the USPTO will not refund the application filing fee, which is a required processing fee. See 37 C.F.R. §§2.6(a)(1)(i)-(iv), 2.209(a); TMEP §405.04.
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(15), 2.66(b)(1).
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 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.
/Dustin T. Bednarz/
Trademark Examing Attorney
Law Office 121
571-270-1151
dustin.bednarz@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.