Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

NONFINAL OFFICE ACTION

 

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:  March 10, 2021

 

This Office action is in response to applicant’s communication filed on 15 February 2021.

 

Assignment Document

Applicant has filed an assignment and submitted the assignment documents as part of the application record.  However, the assignment documents do not indicate that the intent-to-use application was assigned to a successor to applicant’s business as required by Trademark Act Section 10(a)(1).  15 U.S.C. §1060(a)(1).  Moreover, the application was filed under Section 1(b) and no allegation of use has been filed.  15 U.S.C. §1051(b).

 

An intent-to-use application is void if it was filed in the name of a party who was not entitled to use the mark on the application filing date.  37 C.F.R. §2.71(d); see Am. Forests v. Sanders, 54 USPQ2d 1860, 1863 (TTAB 1999); TMEP §§803.06, 1201.02(b).  In addition, an intent-to-use application is void if, prior to filing an allegation of use, the application is assigned to a party other than either a successor to the applicant’s business or to a portion of the applicant’s business to which the mark pertains, if that business is ongoing and existing.  15 U.S.C. §1060(a)(1); 37 C.F.R. §3.16; TMEP §501.01(a); see Cent. Garden & Pet Co. v. Doskocil Mfg. Co., 108 USPQ2d 1134, 1146 (TTAB 2013); Clorox Co. v. Chem. Bank, 40 USPQ2d 1098, 1105-06 (TTAB 1996). 

 

A void application cannot be cured by amendment or assignment.  TMEP §§803.06, 1201.02(b); see 37 C.F.R. §2.71(d).  In such cases, the true owner may only file a new application.  TMEP §803.06.

 

Therefore, applicant must submit a written statement clarifying that the assignment was in compliance with Trademark Act Section 10(a)(1).  15 U.S.C. §1060(a)(1); see TMEP §501.01(a).

 

How to respond.  Click to file a response to this nonfinal Office action.    

 

 

/Angela M Micheli/

Trademark Examining Attorney, Law Office 101

571.272.9196

angela.micheli@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on March 10, 2021 for

U.S. Trademark Application Serial No. 87321338

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Angela M Micheli/

Trademark Examining Attorney, Law Office 101

571.272.9196

angela.micheli@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from March 10, 2021, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”