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: 12/13/2016

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issues below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

SUMMARY OF ISSUES

 

In response to this Office action, applicant must address the following issues:

 

(1)          Section 2(d) Refusal – Likelihood of Confusion;

(2)          English Translation Required;

(3)          Amendment Required – Identification Of Goods Is Indefinite And Contains Misclassified Items;

(4)          Clarification Required – Number Of Classes For Which Registration Is Sought.

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration Nos. 3549210 and 4568759.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

            Standard of Analysis for Section 2(d) Refusal

 

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a potential consumer would be confused, mistaken, or deceived as to the source of the goods of the applicant and registrant.  See 15 U.S.C. §1052(d).  A determination of likelihood of confusion under Section 2(d) is made on a case-by case basis and the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) aid in this determination.  Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1349, 98 USPQ2d 1253, 1256 (Fed. Cir. 2011) (citing On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1085, 56 USPQ2d 1471, 1474 (Fed. Cir. 2000)).  Not all the du Pont factors, however, are necessarily relevant or of equal weight, and any one of the factors may control in a given case, depending upon the evidence of record.  Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d at 1355, 98 USPQ2d at 1260; In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont de Nemours & Co., 476 F.2d at 1361-62, 177 USPQ at 567.

 

In this case, the following factors are the most relevant:  similarity of the marks, similarity and nature of the goods, and similarity of the trade channels of the goods.  See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.

 

            Facts

 

Applicant has applied to register the mark AVANTI for use on “Ophthalmic lenses; spectacle lenses; treated spectacle lenses; coated spectacle lenses; anti-reflective spectacle lenses; spectacle lens blanks; film coatings for ophthalmic lenses; film coatings for spectacle lenses” in International Class 09.

 

U.S. Registration No. 3549210 for the mark AVANTÉ is used in connection with “Protective eyeglasses” in International Class 09.

 

U.S. Registration No. 4568759 for the mark FORWARD is used in connection with “Opthalmic eyewear, namely, eyeglasses, sunglasses and eyewear cases” in International Class 09.

 

            Similarity of the Marks

 

Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression.  Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F. 3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v).  “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.”  In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)); In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988)); TMEP §1207.01(b).

 

In this case, applicant's mark, AVANTI, is confusingly similar to registrants’ marks, AVANTÉ and FORWARD, because the marks are highly similar in sound, appearance, connotation, and commercial impression. 

 

                        Comparison of Applicant’s Mark to Mark in Registration No. 3549210

 

With respect to applicant’s mark and the mark in Registration No. 3549210, the only differences between the marks are the last letters I and É, respectively.  While these letters may slightly alter the appearance between the marks, this minor difference does not obviate the similarities between the marks because the marks are still essentially phonetic equivalents and thus sound similar.  Similarity in sound alone may be sufficient to support a finding that the marks are confusingly similar.  In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b)(iv).  Moreover, the marks still convey similar meanings and create similar commercial impressions.  Specifically, the term AVANTI is an Italian word meaning forward.  See Collins Dictionary, http://www.collinsdictionary.com/dictionary/italian-english/avanti.  According to the translation statement of record, the term AVANTÉ also means forward.  Accordingly, the marks convey identical meanings and create identical commercial impressions.  Therefore, the slight difference in appearance does not obviate the similarities between the marks.

 

                        Comparison of Applicant’s Mark to Mark in Registration No. 4568759

 

With respect to applicant’s mark and the mark in Registration No. 4568759, the only differences between the marks are that applicant uses the foreign term AVANTI whereas registrant uses its English equivalent, FORWARD.  While these marks may differ in sound and appearance, these differences do not obviate the similarities between the marks because the marks convey identical meanings and create identical commercial impressions.

 

Under the doctrine of foreign equivalents, a mark in a foreign language and a mark that is its English equivalent may be held to be confusingly similar.  TMEP §1207.01(b)(vi); see, e.g., In re Aquamar, Inc., 115 USPQ2d 1122, 1127-28 (TTAB 2015); In re Thomas, 79 USPQ2d 1021, 1025 (TTAB 2006).  Therefore, marks comprised of foreign words are translated into English to determine similarity in meaning and connotation with English word marks.  See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1377, 73 USPQ2d 1689, 1696 (Fed. Cir. 2005).  Equivalence in meaning and connotation can be sufficient to find such marks confusingly similar.  See In re Aquamar, Inc., 115 USPQ2d at 1127-28; In re Thomas, 79 USPQ2d at 1025.

 

The doctrine is applicable when it is likely that an ordinary American purchaser would “stop and translate” the foreign term into its English equivalent.  Palm Bay, 396 F.3d at 1377, 73 USPQ2d at 1696; TMEP §1207.01(b)(vi)(A).  The ordinary American purchaser refers to “all American purchasers, including those proficient in a non-English language who would ordinarily be expected to translate words into English.”  In re Spirits Int’l, N.V., 563 F.3d 1347, 1352, 90 USPQ2d 1489, 1492 (Fed. Cir. 2009); see In re Thomas, 79 USPQ2d at 1024 (citing J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition §23:26 (4th ed. 2006), which states “[t]he test is whether, to those American buyers familiar with the foreign language, the word would denote its English equivalent.”).

 

Generally, the doctrine is applied when the English translation is a literal and direct translation of the foreign wording.  TMEP §1207.01(b)(vi); see In re Aquamar, Inc., 115 USPQ2d at 1127-28 (holding MARAZUL for imitation crab meat and frozen and fresh processed fish and seafood likely to be confused with BLUE SEA for non-live and frozen fish, where “mar azul” is the Spanish equivalent of the English word “blue sea”); In re Thomas, 79 USPQ2d at 1021 (holding MARCHE NOIR for jewelry likely to be confused with the cited mark BLACK MARKET MINERALS for retail jewelry and mineral store services where evidence showed that MARCHE NOIR is the exact French equivalent of the English idiom “Black Market,” and the addition of MINERALS did not serve to distinguish the marks); In re Ithaca Indus., Inc., 230 USPQ 702, 704-05 (TTAB 1986) (holding LUPO for men’s and boys’ underwear likely to be confused with the cited registration for WOLF and design for various clothing items, where LUPO is the Italian equivalent of the English word “wolf”).

 

In this case, the doctrine of foreign equivalents is applied because Italian is a common, modern language and it is therefore likely that the ordinary American purchaser would “stop and translate” the term AVANTI into its English equivalent.  See, e.g., In re Ithaca Indus., Inc., 230 USPQ 702 (TTAB 1986) (Italian).  The doctrine of foreign equivalents is also applied because the term FORWARD is a literal and exact translation of the foreign term AVANTI.  Therefore, because the doctrine of foreign equivalents applies and the term FORWARD is a literal and exact translation of the foreign term AVANTI, the marks at issue convey identical meanings and create identical commercial impressions.  Accordingly, the difference in sound and appearance between the terms does not obviate the similarities between the marks.

 

Ultimately, applicant’s mark is likely to cause confusion with registrants’ marks because the similarities in sound, appearance, and connotation create the same overall commercial impression in the minds of consumers.  Thus the marks are confusingly similar.

 

            Relatedness of Goods

 

The goods of the parties need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000) (“[E]ven if the goods in question are different from, and thus not related to, one another in kind, the same goods can be related in the mind of the consuming public as to the origin of the goods.”); TMEP §1207.01(a)(i). 

 

The respective goods need only be “related in some manner and/or if the circumstances surrounding their marketing [be] such that they could give rise to the mistaken belief that [the goods] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).

 

The application identifies “Ophthalmic lenses; spectacle lenses; treated spectacle lenses; coated spectacle lenses; anti-reflective spectacle lenses; spectacle lens blanks; film coatings for ophthalmic lenses; film coatings for spectacle lenses” in International Class 09.

 

U.S. Registration No. 3549210 for the mark AVANTÉ is used in connection with “Protective eyeglasses” in International Class 09.

 

U.S. Registration No. 4568759 for the mark FORWARD is used in connection with “Opthalmic eyewear, namely, eyeglasses, sunglasses and eyewear cases” in International Class 09.

 

In the present case, applicant’s goods are related to registrants’ goods because the same entity that provides “Ophthalmic lenses; spectacle lenses; treated spectacle lenses; coated spectacle lenses; anti-reflective spectacle lenses; spectacle lens blanks; film coatings for ophthalmic lenses; film coatings for spectacle lenses” also commonly provides “Protective eyeglasses” or “Opthalmic eyewear, namely, eyeglasses, sunglasses and eyewear cases”, and these goods are all marketed together to consumers under a common mark.  Moreover, these goods are sold through the same channels of trade and used by the same class of consumers in the same fields of use.

 

The attached Internet evidence consists of websites for third-party providers of eyeglasses, lenses, and lens coatings, such as those identified in the application and registrations.  For example, Zeiss is a provider of optical products that offers consumers ophthalmic lenses, spectacle lenses, anti-reflective lenses, film coatings for lenses, protective eyeglasses, eyeglasses, and sunglasses.  This evidence establishes that the same entity commonly provides the relevant goods and markets the goods under the same mark, that the relevant goods are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use, and that the goods are similar or complementary in terms of purpose or function.  Therefore, applicant’s and registrant’s goods are considered related for likelihood of confusion purposes.  See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).

 

Zeiss, http://www.zeiss.com/vision-care/en_us/better-vision/better-vision-with-zeiss/your-individualized-zeiss-lens/zeiss-lens-finishing-duravision-platinum.html; http://www.zeiss.com/vision-care/en_us/spectacle-lenses-from-zeiss/single-vision-lenses.html; http://www.zeiss.com/vision-care/en_us/spectacle-lenses-from-zeiss/progressive-lenses.html; http://www.zeiss.com/vision-care/en_us/spectacle-lenses-from-zeiss/lenses-for-computer-glasses.html; http://www.zeiss.com/vision-care/en_us/better-vision/your-comprehensive-guide-to-better-vision/topic-sports-and-leisure-glasses.html;

X-Cel, http://www.x-celoptical.com/transitions_lenses.php; http://www.x-celoptical.com/aris_trivex.php; http://www.x-celoptical.com/occupational_eyewear.php; http://www.x-celoptical.com/PDF%20files/XCEL%20Lens%20Guide%202016.pdf;

Essilor, http://www.essilor-sunsolution.com/en/why-essilor-sun-solution; http://www.essilor-sunsolution.com/en/collections-and-brands/vision/haute-couture-design; http://www.essilor-sunsolution.com/en/our-collections/sport-performance; http://www.essilor-sunsolution.com/en/collections-and-brands/protection/photochromic-lenses; http://www.essilor-sunsolution.com/en/collections-and-brands/prescription/sol-utions-rx%E2%84%A2; http://www.essilor-sunsolution.com/en/collections-and-brands/sunglass-lens-technology/nxt;

Crizal, http://www.crizalusa.com/content/crizal/us/en/no-glare-lenses.html; http://www.crizalusa.com/content/crizal/us/en/scratch-smudge-dust-water-uv-glare-protection/lenses.html;

Three Rivers Optical, http://3riversoptical.com/coatings/; http://3riversoptical.com/seemore-freeform/; http://3riversoptical.com/specialty-occupational/; http://3riversoptical.com/frame-selections/;

Vision Ease, http://www.visionease.com/; http://www.visionease.com/services/mycoat/mirrors-and-coatings/; http://www.visionease.com/product-solutions/lenses-styles-treamements/;

 

Evidence obtained from the Internet may be used to support a determination under Section 2(d) that goods are related.  See, e.g., In re G.B.I. Tile & Stone, Inc., 92 USPQ2d 1366, 1371 (TTAB 2009); In re Paper Doll Promotions, Inc., 84 USPQ2d 1660, 1668 (TTAB 2007).  The Internet has become integral to daily life in the United States, with Census Bureau data showing approximately three-quarters of American households used the Internet in 2013 to engage in personal communications, to obtain news, information, and entertainment, and to do banking and shopping.  See In re Nieves & Nieves LLC, 113 USPQ2d 1639, 1642 (TTAB 2015) (taking judicial notice of the following two official government publications:  (1) Thom File & Camille Ryan, U.S. Census Bureau, Am. Cmty. Survey Reports ACS-28, Computer & Internet Use in the United States:  2013 (2014), available at http://www.census.gov/content/dam/Census/library/publications/2014/acs/acs-28.pdf, and (2) The Nat’l Telecomms. & Info. Admin. & Econ. & Statistics Admin., Exploring the Digital Nation:  America’s Emerging Online Experience (2013), available at http://www.ntia.doc.gov/files/ntia/publications/exploring_the_digital_nation_-_americas_emerging_online_experience.pdf).  Thus, the widespread use of the Internet in the United States suggests that Internet evidence may be probative of public perception in trademark examination.

 

Therefore, because the marks are confusingly similar and the goods are closely related, purchasers encountering these goods are likely to believe, mistakenly, that they emanate from a common source. Accordingly, there is a likelihood of confusion and registration is refused pursuant to Section 2(d) of the Trademark Act.

 

Response to Section 2(d) Likelihood of Confusion Refusal

 

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.

 

ENGLISH TRANSLATION REQUIRED

 

Applicant must submit an English translation of all foreign wording in the mark.  37 C.F.R. §§2.32(a)(9), 2.61(b); see TMEP §809.  In the present case, the wording “AVANTI” requires translation.

 

The following translation statement is suggested: 

 

The English translation of the word “AVANTI” in the mark is “forward”. 

 

TMEP §809.03.  See attached translation evidence.

 

AMENDMENT REQUIRED – IDENTIFICATION OF GOODS IS INDEFINITE AND CONTAINS MISCLASSIFIED ITEMS

 

The wording “film coatings for ophthalmic lenses; film coatings for spectacle lenses” in the identification of goods must be clarified because it is indefinite and appears to be misclassified.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  Specifically, the exact nature, type, and purpose of the “film coatings” is not sufficiently specified.  Generally, however, protective and anti-reflective coating for lenses are classified in International Class 02.  Applicant must therefore further clarify the exact nature, type, and purpose of the goods.  Because the identified goods do not appear to identify any acceptable goods in International Class 09, the examining attorney is unable to offer a suggested amendment in that class.  Applicant must therefore also respond by (1) adding an appropriate International Class to the application and reclassifying these goods in the proper international class, (2) deleting “film coatings for ophthalmic lenses; film coatings for spectacle lenses” from the application, or (3) deleting the remainder of the items in the identification and reclassifying the specified goods in the proper international class.  See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq.  If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.

 

Applicant may substitute the following wording, if accurate: 

 

Class 02 – “Protective film coatings for ophthalmic lenses; protective film coatings for spectacle lenses”

 

Class 09 – “Ophthalmic lenses; spectacle lenses; treated spectacle lenses; coated spectacle lenses; anti-reflective spectacle lenses; spectacle lens blanks; film coatings for ophthalmic lenses; film coatings for spectacle lenses”

 

See TMEP §§1402.01, 1402.03.

 

Applicant’s goods 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 goods or add goods not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods 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 goods will further limit scope, and once goods 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.

 

CLARIFICATION REQUIRED – NUMBER OF CLASSES FOR WHICH REGISTRATION IS SOUGHT

 

The application identifies goods that are classified in at least two classes; however, applicant submitted a fee sufficient for only one class.  In a multiple-class application, a fee for each class is required.  37 C.F.R. §2.86(a)(2), (b)(2); TMEP §§810.01, 1403.01.

 

Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class.

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

The application identifies goods in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(1)       List the goods by their international class number in consecutive numerical order, starting with the lowest numbered class.

 

(2)       Submit a filing fee for each international class not covered by the fees already paid (view the USPTO’s current fee schedule at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp). 

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

For an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/multiclass.jsp.

 

The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class.  See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a).  For information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee by TEAS and in a paper submission, please go to http://www.gov.uspto.report/trademark/laws-regulations/how-satisfy-requirements-multiple-class-trademark-electronic-application.

 

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 Plus application, applicant must respond online using the Trademark Electronic Application System (TEAS) to avoid incurring an additional fee.  See 37 C.F.R. §2.22(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(a)(15), 2.66(b)(1).

 

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 refusals or requirements 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.  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 or e-mail without incurring this additional fee.  

 

/Seth Dennis/

Examining Attorney

Law Office 113

(571) 272-9495

seth.dennis@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 12/13/2016 FOR U.S. APPLICATION SERIAL NO. 87158442

 

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 12/13/2016 (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.