To: | REXKING INDUSTRY, INC. (sueyen@sylcpa.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 87394650 - DOUGLAS - N/A |
Sent: | 6/28/2017 9:55:36 PM |
Sent As: | ECOM101@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 87394650
MARK: DOUGLAS
|
|
CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
|
APPLICANT: REXKING INDUSTRY, INC.
|
|
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: 6/28/2017
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
Search Results:
The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
Summary of Issues:
Requirement: Clarification of Color Claim and Mark Description
The wording “arial” in the description of the mark is a registered mark that does not appear to be owned by applicant. See attached copy of U.S. Registration No(s). 2270853. Applications for marks not in standard characters must include an accurate and concise description of the entire mark using common non-proprietary language. See 37 C.F.R. §2.37; TMEP §808.02; cf. Camloc Fastener Corp. v. Grant, 119 USPQ 264, 265 n.1 (TTAB 1958) (the use of registered marks in identifications is inappropriate because it indicates origin in another party); TMEP §1402.09.
Therefore, applicant must amend the description to delete reference to the registered mark and replace it with generic wording. TMEP §808.02.
Also, the drawing shows the applied-for mark in various colors, including white. Although the application includes a claim of color and a mark description referencing color, the colors black, white and/or gray are not included in either the color claim. The color claim and mark description must be complete and reference all the colors in the mark. See 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §§807.07(a) et seq. Therefore, applicant must clarify whether white is being claimed as color and/or are intended to indicate background, outlining, shading and/or transparent areas. TMEP §807.07(d).
To clarify whether black, white and/or gray are being claimed as color, applicant must satisfy one of the following:
(1) If black, white and/or gray are being claimed as colors in the mark, applicant must amend the color claim to include these colors, and amend the mark description to identify the literal and design elements that include these colors and specify where the black, white and/or gray appears in these elements; or
(2) If black, white and/or gray are not being claimed as colors in the mark, applicant must provide a statement that the colors black, white, and/or gray represent background, outlining, shading and/or transparent areas and are not part of the mark.
Id.
The following mark description and color claim are acceptable, if accurate:
Mark Description: The mark consists of the word "DOUGLAS" appearing in all capitalized letters and black font. In contrast with the other letters, the "D" is slightly larger and stylized. The left side of the D has two ears, with one appearing at each the top and bottom of the letter. A white trim also runs the height of the letter along its left side. This white trim also follows the curves created by the ears, creating the impression of a bevel that slopes downwards and outwards form the "D". In addition, the center of the "D" is filled with a red sphere with white highlighting.
Color Claim: The colors red, white and black are claimed as a feature of the mark.
TEAS Guidelines:
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.
/Justine D. Parker/
Justine D. Parker
Trademark Examining Attorney
Law Office 101
(571) 272-2488
justine.parker@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.