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

 

 

ISSUE/MAILING DATE: 5/2/2019

 

 

STRICT DEADLINE TO RESPOND TO THIS LETTER:  To avoid abandonment of applicant’s trademark application, the USPTO must receive a complete response within (1) thirty (30) days of the date of issuance of this letter, or (2) the time remaining in the six-month period for responding to the previous Office action, whichever is longer.

 

Applicant filed a timely request for reconsideration on April 24, 2019, responding to the final Office action that was issued on October 25, 2018.  Although the request does not resolve the remaining issue, applicant’s response was filed within the six-month response period and otherwise complies with 37 C.F.R. §2.65(a)(2).  Thus, applicant is being granted thirty (30) days from the date of issuance of this letter to resolve the outstanding issue.  See 37 C.F.R. §2.65(a)(2); TMEP §§715.03(a)(ii)(C), 718.03(b). 

 

In the present case, applicant was not domiciled, incorporated, or organized, or had a bona fide and effective industrial or commercial establishment, in a treaty country during the six-month priority period beginning at the date of filing of the foreign application.  See TMEP §1002.02.  Therefore, the foreign registration cannot serve to support the Section 44(e) basis.  However, applicant indicated in the latest response that it would add Section 1(b) basis to the application but failed to perfect the basis.  Consequently, applicant is given thirty (30) days to perfect the Section 1(b) basis and explicitly withdraw the Section 44(e) basis. 

 

 

 

 

Section 1(b) Basis

 

To amend an application to one based on a bona fide intention to use the mark in commerce under Trademark Act Section 1(b), an applicant must provide the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “Applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date.”  See 37 C.F.R. §2.34(a)(2).

 

For more information about Section 1(b) basis requirements, and instructions on how to satisfy them online using the Trademark Electronic Application System (TEAS) form, please go to the Basis webpage.

 

If applicant does not resolve the outstanding issue within the thirty-day time period, the application will be held ABANDONED.  See TMEP §715.03(a)(ii)(C).

 

This letter does not extend the time for filing an appeal with the Trademark Trial and Appeal Board.  TMEP §§715.03(a)(ii)(C), 718.03(b).  An applicant must file a notice of appeal online using the Electronic System for Trademark Trials and Appeals (ESTTA) within six months of the issuance date of the final Office action.  See 15 U.S.C. §1062(b); 37 C.F.R. §§2.63(b)(3), 2.142(a); TMEP §§715.03(c), 718.03(b).  The fee for filing an appeal through ESTTA is $200 per class.  37 C.F.R. §2.6(a)(18)(ii).

 

 

 

 

 

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.  

 

 

 

/Christopher Buongiorno/

Attorney

Law Office 102

(571) 272-9251

christopher.buongiorno@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 5/2/2019 FOR U.S. APPLICATION SERIAL NO. 87526113

 

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 5/2/2019 (or sooner if specified in the Office action).  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.  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 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.