To: | CKL Holdings N.V. (jm@moas.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 87360523 - GIZMO - N/A |
Sent: | 1/4/2018 2:44:22 PM |
Sent As: | ECOM112@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 87360523
MARK: GIZMO
|
|
CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
|
APPLICANT: CKL Holdings N.V.
|
|
CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
|
OFFICE ACTION
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. A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.
ISSUE/MAILING DATE: 1/4/2018
This Office action is in response to the applicant’s correspondence dated November 28, 2017. The Section 2(d) refusal has been obviated by the applicant’s deletion of the relevant goods. Therefore, the refusal is hereby withdrawn.
Moreover, the identification of goods and services requirement has been satisfied and is hereby withdrawn.
However, the name of the owner of the foreign registration differs from that of the applicant. Accordingly, registration is refused because the foreign registration that serves as the basis for the applicant’s Section 44(e) filing basis is unacceptable.
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 11/28/2017, 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 CKL Holdings N.V., a naamloze vennootschap (nv) organized in Belgium, while the foreign registration sets forth the owner as Gizmo International Ltd.
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).
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.
RESPONDING TO THIS OFFICE ACTION
To expedite prosecution of the application, applicant is encouraged to file its response to this Office action online via the Trademark Electronic Application System (TEAS), which is available at http://www.gov.uspto.report/trademarks/teas/index.jsp. If applicant has technical questions about the TEAS response to Office action form, applicant can review the electronic filing tips available online at http://www.gov.uspto.report/trademarks/teas/e_filing_tips.jsp and e-mail technical questions to TEAS@uspto.gov.
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.
/Eli J. Hellman/
Trademark Examining Attorney
United States Patent & Trademark Office
Law Office 112
(571) 272-8276
eli.hellman@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.