To: | Hutchingame Growth Capital Corporation (mhomyk@blankrome.com) |
Subject: | U.S. Trademark Application Serial No. 87218504 - DAYTON - 151178-00101 |
Sent: | September 19, 2019 09:06:42 PM |
Sent As: | ecom102@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 87218504
Mark: DAYTON
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Correspondence Address:
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Applicant: Hutchingame Growth Capital Corporation
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Reference/Docket No. 151178-00101
Correspondence Email Address: |
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The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: September 19, 2019
Applicant’s response dated September 9, 2019, is acknowledged by this Office action. Applicant addressed the significance inquiry. The amendment to the identification of goods is acceptable. However, the foreign registration shows an owner that differs from the owner of the mark in this application. Further, some of the goods in the U.S. application are not included in the foreign registration. Before the mark is approved for publication, applicant must address these issues.
Section 44(e) Basis
In an application filed under Section 44(e), the applicant must be the owner of the foreign registration on the filing date of the U.S. application. TMEP §1005; see 37 C.F.R. §2.34(a)(3); 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). 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 Hutchingame Growth Capital Corporation, while the foreign registration sets forth the owner as Dayton Boot Co. Enterprises LTD.
If applicant can prove the foreign registration was assigned to applicant on or before the filing date of 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 on or before the filing date of the U.S. application. See TMEP§§1005, 1006.
If applicant did not own the foreign registration on or before the filing date of the U.S. application, applicant may delete the Section 44(e) basis and rely solely on Section 1(b) as the basis for registration. See TMEP §806.04.
Particular Goods Exceed Scope of Foreign Registration
In this case, the U.S. application identifies the particular goods as follows: “electric signs; digital signs; electronic signs.” However, the foreign registration identifies signs as “non-illuminated signs.”
These goods in the U.S. application exceed the scope of goods in the foreign registration because the goods identified in the U.S. application are broader than the goods in the foreign registration. Thus, these goods in the U.S. application are not acceptable for the Section 44(e) filing basis and cannot be amended to correspond with the goods and/or services in the foreign registration.
Applicant may respond to this issue by satisfying one of the following:
(1) Amending the identification of goods in the U.S. application for the Section 44(e) filing basis to correspond with the goods identified in the foreign registration, if possible, to ensure that all goods beyond the scope of the foreign registration are deleted from the U.S. application; or
(2) Deleting the Trademark Act Section 44 basis for the goods beyond the scope of the foreign registration and relying solely on the Section 1 basis for those goods.
See 15 U.S.C. §§1051(a)-(b), 1126; 37 C.F.R. §§2.32(a)(6), 2.34(b), 2.35(b); Marmark Ltd. v. Nutrexpa S.A., 12 USPQ2d 1843, 1845 (TTAB 1989); TMEP §§806.02, 806.04, 1402.01(b).
Additionally, applicant may respond by arguing that these goods and/or services are within the scope of the foreign registration and should remain in the U.S. application.
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 $125 per 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 or e-mail without incurring this additional fee.
How to respond. Click to file a response to this nonfinal Office action
/Christopher Buongiorno/
Christopher Buongiorno, Attorney
United States Patent & Trademark Office
Law Office 102
(571) 272-9251
RESPONSE GUIDANCE