UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

OFFICE ACTION

 

STRICT DEADLINE—TO AVOID ABANDONMENT OF THIS TRADEMARK APPLICATION, THE USPTO MUST RECEIVE A COMPLETE RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE DATE.

 

ISSUE/MAILING DATE: 7/29/2016

 

The undersigned examining attorney has reviewed the above-referenced application, in accordance with section 2.61 of the Trademark Rules of Practice, 37 C.F.R. § 2.61 (2016), and has determined that the application cannot be advanced at this time, for the reasons detailed in this communication.

NO CONFLICTING MARKS

The Office records have been searched and no similar registered or pending mark has been found that would bar registration under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d) (2012).  Trademark Manual of Examining Procedure § 704.02 (April 2016).

PROCEDURAL REQUIREMENT

TRANSLATION OF FOREIGN WORDING NEEDED

Applicant is seeking to register the special form mark “EL CAPITAN.”

All foreign wording in a mark must be translated for the record.  37 C.F.R. §§ 2.32(a), 2.61(b); see TMEP § 809. 

The attached evidence demonstrates that the English-language equivalent of the Spanish terms “EL CAPITAN” is “THE CAPTAIN.”  Merriam-Webster Spanish English Dictionary, http://www.spanishcentral.com/translate/capitan       (attached hereto); WordReference.com (Spanish to English), http://www.wordreference.com/es/en/translation.asp?spen=capitan (attached hereto). 

Therefore, Applicant must submit an English translation of the wording “EL CAPITAN” prior to the application being in condition for publication.  The following translation statement is suggested: 

The English translation of the Spanish wording “EL CAPITAN” is “THE CAPTAIN”.

37 C.F.R. §§ 2.32(a)(9), 2.61(b); see TMEP § 809.03.

TEAS PLUS APPLICANT REQUIREMENT NOT SATISFIED

Applicant must submit an additional application processing fee of $50 per class because the application as filed does not meet the TEAS Plus application requirements in accordance with Rule 2.22(a).  37 C.F.R. §§ 2.6(a)(1)(iv), 2.22(a), (c); see TMEP §§ 819.01, .04. 

The additional fee is mandatory because Applicant failed to provide an English translation of all non‑English wording.  37 C.F.R. § 2.22(a)(16); TMEP § 819.01(m).  The additional fee is required even if Applicant later corrects these application requirements.  Please see the above‑provided requirement for more information. 

Applicant must respond timely and completely to the issues raised in this Office Action.  15 U.S.C. § 1062(b); 37 C.F.R. §§ 2.62, 2.65(a); TMEP §§ 711, 718.03.

Please contact the undersigned attorney with any questions.

Sincerely,

/Judy Helfman/

Judith M. Helfman

Attorney at Law

Law Office 111

571/272-5892 (direct line)

judy.helfman@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 7/29/2016 FOR U.S. APPLICATION SERIAL NO. 86974367

 

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 7/29/2016, 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. 

 

/Judy Helfman/

Judith M. Helfman

Attorney at Law

Law Office 111

571/272-5892 (direct line)

judy.helfman@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.