To: | HSBC GROUP MANAGEMENT SERVICES LIMITED (nyctrademarks@bakermckenzie.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 86817041 - JADE - 10060604/501 |
Sent: | 3/5/2016 3:11:09 PM |
Sent As: | ECOM112@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 86817041
MARK: JADE
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: HSBC GROUP MANAGEMENT SERVICES LIMITED
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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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: 3/5/2016
1. Description of the mark.
2. Foreign registration certificate required.
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.
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).
Informalities
DESCRIPTION OF MARK accurate but incomplete
Therefore, applicant must provide a more complete description of the applied-for mark. The following is suggested:
The mark consists of the word JADE represented in stylized font with the letter E featured forward and backward and a diamond design in the bottom right section within the stylized letter E.
FOREIGN REGISTRATION CERTIFICATE REQUIRED
The application specifies both an intent to use basis under Trademark Act Section 1(b) and a claim of priority under Section 44(d) based on a foreign application. See 15 U.S.C. §§1051(b), 1126(d); 37 C.F.R. §2.34(a)(2), (a)(4). However, the application does not include a copy of a foreign registration or a statement indicating whether applicant intends to rely on Section 44(e) as an additional basis for registration. See 15 U.S.C. §1126(e).
Although Section 44(d) provides a basis for filing and a priority filing date, it does not provide a basis for publication or registration. 37 C.F.R. §2.34(a)(4)(iii); TMEP §§1002.02, 1003.03. It is unclear whether applicant intends to rely on Section 44(e) as an additional basis for registration.
Therefore, applicant must clarify the basis in the application by satisfying one of the following:
(1) If applicant intends to rely on Section 44(e), in addition to Section 1(b), as a basis for registration, applicant must so specify. In addition, (a) applicant’s country of origin must either be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law; and (b) applicant must submit a true copy, photocopy, certification or certified copy of the foreign registration from applicant’s country of origin. See 15 U.S.C. §1126(b)-(c), (e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1002.01, 1004, 1016. A copy of the foreign registration must be a copy of a document that issued to applicant by or was certified by the intellectual property office in applicant’s country of origin. TMEP §1004.01. If the foreign registration is not written in English, then applicant must provide an English translation. 37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b). The translation should be signed by the translator. TMEP §1004.01(b). If the foreign registration has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English translation, as appropriate), applicant should so inform the trademark examining attorney and request that the U.S. application be suspended until a copy of the foreign registration is available. TMEP §§716.02(b), 1003.04(b).
(2) If applicant does not intend to rely on Section 44(e) as a basis for registration but still wants to retain the Section 44(d) priority filing date, applicant must so specify and request that the mark be approved for publication based solely on the Section 1(b) basis. See TMEP §§806.02(f), 806.04(b), 1003.04(b). Although the mark may be approved for publication on the Section 1(b) basis, it will not register until an acceptable allegation of use has been filed. See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103.
The following legal authorities govern the processing of trademark and service mark applications by the Office: The Trademark Act, 15 U.S.C. §§1051 et seq., the Trademark Rules of Practice, 37 C.F.R. Part 2, and the Office’s Trademark Manual of Examining Procedure (TMEP) (4th ed., 2005), available on the United States Patent and Trademark Office web site at http://www.gov.uspto.report/main/trademarks.htm.
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 of this application; (3) the mailing date of this Office action; and, (4) applicant's telephone number. 37 C.F.R. §2.194(b)(1); TMEP §302.03(a).
If the Applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
Trademark Examining Attorney
U.S. Patent & Trademark Office
Law Office 112
Phone: 571-272-9718
Warren.Olandria@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.