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: 7/6/2016

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on 06/03/2016.

 

In a previous Office action dated 05/25/2016, applicant was required to satisfy the following requirements:  Amend the identification of services and submit a copy of the Foreign Registration Certificate.

 

Based on applicant’s response, the trademark examining attorney notes that the following requirement has been satisfied: Definite amended identification of services provided for International Class 42.  See TMEP §§713.02, 714.04. 

 

The following requirements, however, have not been satisfied:  Amended identification of services in International Classes 35 and 44. 

 

Furthermore, applicant’s response raises a new refusal and requirement regarding applicant’s ownership of the foreign registration.

 

Applicant must respond timely and completely to the issues below. 

 

SUMMARY OF ISSUES:

 

• Ownership Requirements
• Classification and Identification of Services

 

REFUSAL – APPLICANT IS NOT THE OWNER OF THE FOREIGN REGISTRATION

 

Registration is refused under Trademark Act Section 44(e) because applicant was not the owner of the foreign registration as of the filing date of the amendment adding a Section 44(e) basis to the U.S. application.  See 15 U.S.C. §1126(e); SARL Corexco v. Webid Consulting Ltd., 110 USPQ2d 1587, 1590-91 (TTAB 2014); TMEP §1005. 

 

An applicant must be the owner of a foreign registration as of the filing date of the amendment adding Section 44(e) as a basis to an application.  SARL Corexco v. Webid Consulting Ltd., 110 USPQ2d 1587, 1590-91 (TTAB 2014); TMEP §1005.  Applicant submitted a foreign registration on 06/03/2016, effectively adding Section 44(e) as a basis for registration to the U.S. application.  However, in this case, the foreign registration specifies an owner other than the U.S. applicant.  Specifically, the U.S. application sets forth the owner as Bluebee Holding BV, while the foreign registration sets forth the owner as Bluebee Holding. 

 

If applicant can prove the foreign registration was assigned to applicant as of the date of the amendment adding Section 44(e) to the U.S. application, the Section 44(e) basis can remain in the application.  See TMEP §1005.  Applicant may establish ownership of the foreign registration by submitting (1) a copy of an assignment document, (2) certification from the foreign trademark office that reflects applicant’s ownership of the foreign registration and the date of the assignment, or (3) a printout from the intellectual property’s office website that shows the foreign registration was assigned to applicant as of the amendment adding a Section 44(e) basis to the application.  See TMEP §§1005, 1006.

 

If applicant did not own the foreign registration on or before the date of the amendment adding Section 44(e) to the U.S. application, applicant may amend the basis for registration from Section 44(e) to Section 1(a) or 1(b), if applicant can satisfy the requirements for the new basis.  See 15 U.S.C. §1051(a)-(b); TMEP §§806.03, 1005.  A foreign registration certificate is not required for a Section 1(a) or 1(b) basis.  See 15 U.S.C. §1051(a)-(b); TMEP §806.01(a)-(b).

 

INFORMATION REQUIRED TO ESTABLISH OWNERSHIP OF FOREIGN APPLICATION

 

Applicant’s submission of a foreign registration that specifies an owner different from that of the U.S. applicant raises a question regarding the applicant’s ownership of the underlying foreign application.  See TMEP §1005.  In an application filed under Section 44(d), the applicant must be the owner of the foreign application on the filing date of the U.S. application.  TMEP §1005; see In re De Luxe, N.V., 990 F.2d 607, 609, 26 USPQ2d 1475, 1477 (Fed. Cir. 1993); In re Tong Yang Cement Corp., 19 USPQ2d 1689, 1690-91 (TTAB 1991).  Accordingly, applicant must establish ownership of the foreign application on the date of filing in the United States to retain the priority filing date.  TMEP §1005; see 37 C.F.R. §2.61(b). 

 

Applicant may establish ownership of the foreign application by submitting (1) a copy of an assignment document, (2) certification from the foreign trademark office that reflects applicant’s ownership of the foreign application and the date of the assignment, or (3) a printout from the intellectual property’s office website that shows the foreign application was assigned to applicant on or before the filing date of the U.S. application.  See TMEP §§1005, 1006. 

 

If applicant cannot establish ownership of the foreign application, applicant will not be entitled to the Section 44(d) priority filing date and the priority claim will be deleted.  TMEP §1005. 

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.  However, if applicant responds to the refusal, applicant must also respond to the requirements set forth below.

 

CLASSIFICATION AND IDENTIFICATION OF SERVICES

 

The wording “research and information services” in the identification of services in International Class 35 is indefinite and must be clarified because, depending on the subject matter, “research and information services” may be classified in other classes.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

In addition, applicant has classified the following services in International Class 44:  “genetic testing and data analytics with respect to plant selection and propagation of plants, plant material and produce in the fields of agriculture, aquaculture, horticulture and forestry.”  But the proper classification is in International Class 42, because the genetic testing and data analytics is for scientific research purposes and not for medical purposes.

 

Applicant may substitute the following classification and identification, if accurate: 

 

International Class 35: Business data analysis, business failure analysis and business management analysis; business research and information services.

 

International Class 42: Science and technology services, namely, scientific research, analysis and testing in the field of genetic screening and genome analytics; genetic testing and data analytics with respect to plant selection and propagation of plants, plant material and produce in the fields of agriculture, aquaculture, horticulture and forestry

 

International Class 44: Human healthcare services; genetic testing and data analytics with respect to plant selection and propagation of plants, plant material and produce in the fields of agriculture, aquaculture, horticulture and forestry

 

Applicant should note that the above bolded language and deletions in strikethrough indicate the examining attorney’s suggestions.  Applicant need not amend its identification other than where specified by bold font and deletions in strikethrough.

 

Applicant’s services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different services or add services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the will further limit scope, and once services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

 

ASSISTANCE

 

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.

 

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. 

 

 

 

/Salima Parmar Oestreicher/

Examining Attorney

Law Office 108

(571) 272-6786

salima.oestreicher@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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 7/6/2016 FOR U.S. APPLICATION SERIAL NO. 86894755

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click 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)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 7/6/2016 (or sooner if specified in the Office action).  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.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.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System (TEAS) response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@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.