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

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: 11/22/2017

 

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.

 

I.         SEARCH OF THE OFFICE RECORDS

 

Application Refused--Section 2(d) Refusal—Likelihood of Confusion

The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d) because the applicant’s applied-for mark when used on or in connection with the identified goods so resembles the mark in U.S. Registration No. 3395322 as to be likely to cause confusion, to cause mistake, or deceive. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  Please see the enclosed registration.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a consumer would be confused, mistaken, or deceived as to the source of the goods of the applicant and registrant(s).  See 15 U.S.C. §1052(d).  Determining likelihood of confusion is made on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973).  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017).  However, “[n]ot all of the [du Pont] factors are relevant to every case, and only factors of significance to the particular mark need be considered.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1366, 101 USPQ2d 1713, 1719 (Fed. Cir. 2012) (quoting In re Mighty Leaf Tea, 601. F.3d 1342, 1346, 94 USPQ2d 1257, 1259 (Fed. Cir 2010)).  Furthermore, the relevant du Pont factors are not necessarily “of equal weight in a given case, and any one of the factors may control a particular case.” Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F3d 1344, 1355, 98 USPQ2d 1253, 1260 (Fed. Cir. 2011) (quoting In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003).

 

The USPTO may focus its analysis “on dispositive factors, such as similarity of the marks and relatedness of the goods [and/or services].”  In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); see TMEP §1207.01.  In this case, the examining attorney finds the following du Pont factors are most relevant: the similarity of the marks, the similarity and nature of the goods, and the similarity of the trade channels for these goods.  See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.

 

The applicant’s proposed mark is PROVEN; the registered mark is PROUVÉ.

 

Comparison of the Respective Marks

In a likelihood of confusion determination, the examining attorney must compare the marks for similarities in sound, appearance, meaning or connotation.  In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (CCPA 1973); TMEP §1207.01(b).  Similarity in any one of these elements is sufficient to find a likelihood of confusion. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB (1988); In re Mack, 197 USPQ 755 (TTAB 1977); see TMEP §§1207.01(b).

 

Under the doctrine of foreign equivalents, a mark in a common, modern foreign language and a mark that is its English equivalent may be held confusingly similar.  TMEP §1207.01(b)(vi); see, e.g., In re Aquamar, Inc., 115 USPQ2d 1122, 1127-28 (TTAB 2015); In re Thomas, 79 USPQ2d 1021, 1025 (TTAB 2006).  Consequently, marks comprised of foreign wording are translated into English to determine similarity in meaning and connotation with English word marks.  See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1377, 73 USPQ2d 1689, 1696 (Fed. Cir. 2005).  Equivalence in meaning and connotation may be sufficient to find such marks confusingly similar.  See In re Aquamar, Inc., 115 USPQ2d at 1127-28; In re Thomas, 79 USPQ2d at 1025.

 

The examining attorney refuses registration of the proposed mark PROVEN on the grounds that it will cause a likelihood of confusion with the registered mark PROUVÉ.  The cited registration, comprising the term PROUVÉ is a French term that is a direct translation for the English word PROVEN.[1]  The registrant’s mark is in French, which is a common, modern language in the United States.  See In re Optica Int’l, 196 USPQ 775 (TTAB 1977) (French).

 

The doctrine is applied when “the ordinary American purchaser” would “stop and translate” the foreign term into its English equivalent.  Palm Bay, 396 F.3d at 1377, 73 USPQ2d at 1696 (quoting In re Pan Tex Hotel Corp., 190 USPQ 109, 110 (TTAB 1976)); TMEP §1207.01(b)(vi)(A).  The ordinary American purchaser includes those proficient in the foreign language.  In re Spirits Int’l, N.V., 563 F.3d 1347, 1352, 90 USPQ2d 1489, 1492 (Fed. Cir. 2009); see In re Thomas, 79 USPQ2d at 1024.  In this case, the evidence from the attached U.S. Census survey shows that at least 1,307,000 people in the U.S. speak French.[2]  As such, the Office must find that a large number of U.S. consumers who speak this language.  Given this evidence, the examining attorney finds that the ordinary American purchaser would likely stop and translate the mark because the French language is a common, modern language spoken by an appreciable number of consumers in the United States. 

 

The test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side-by-side comparison.  The issue is whether the marks create the same overall impression. See Racot, Inc. v. M.C. Becton, 214 F.2d 1322, 1329-30, 54 USPQ2d 1894, 1899 (Fed Cir. 2000); Visual Information Institute, Inc. v. Vicon Industries Inc., 209 USPQ 179 (TTAB 1980).  The focus is on the recollection of the average purchaser who normally retains a general rather than specific impression of trademarks.  Chemetron Corp. v. Morris Coupling & Clamp Co., 203 USPQ 537 (TTAB 1979); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975); TMEP §1207.01(b).  Because the applicant’s proposed mark is merely the English equivalent of the foreign wording appearing in the cited registration, the commercial impression given by these respective marks highly similar.   In sum, the examining attorney finds that applicant’s proposed mark so resembles the registered mark in relation to sound, appearance, and meaning that confusion as to source is likely.

 

Comparison of the Respective Goods

The goods are compared to determine whether they are similar, commercially related, or travel in the same trade channels.  See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).  It is well settled that the compared products need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i).  They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).

 

If the marks of the respective parties are identical or highly similar, the relationship between the goods of the respective parties need not be as close to support a finding of likelihood of confusion as might apply where differences exist between the marks. In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001); Amcor, Inc. v. Amcor Industries, Inc., 210 USPQ 70, 78 (TTAB 1981); TMEP §1207.01(a).  In addition, the Office must also consider any goods or services in the registrant’s normal fields of expansion in order to determine whether the registrant’s goods or services are related to the applicant’s identified goods or services for purposes of analysis under Section 2(d).  In re General Motors Corp., 196 USPQ 574 (TTAB 1977).  The test is whether purchasers would believe the product or service is within the registrant’s logical zone of expansion.  CPG Prods. Corp. v. Perceptual Play, Inc., 221 USPQ 88 (TTAB 1983); TMEP §1207.01(a)(v).

 

The examining attorney refuses registration of the mark PROVEN because the channels of trade in which the applicant’s goods travel are similar to those used by the registrant.  The applicant’s goods are identified as “cosmetics; skin, face and body care products, namely, cleansers, toners, lotions, serums, creams, sun screens, spot treatments, and masks; makeup; hair and hair care products, namely, shampoos, conditioners, serums, masks, coloring, styling and treatment products”.  The goods named in the registration comprise “non-medicated skin care preparations”. 

 

When analyzing an applicant’s and registrant’s goods for similarity and relatedness, that determination is based on the description of the goods stated in the application and registration at issue, not on extrinsic evidence of actual use.  See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)). 

 

Absent restrictions in an application or registration, the identified goods are presumed “travel in the same channels of trade to the same class of purchasers.”  In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)).  In this case, the identifications set forth in the application and registration have no restrictions as to their nature, type, channel of trade or class of purchasers.  Therefore, it is presumed that these goods travel in the same channels of trade to the same class of purchasers.

 

In addition, it is noted that unrestricted and broad identifications are presumed to encompass all goods of the type described.  See In re Jump Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB 2006) (citing In re Elbaum, 211 USPQ 639, 640 (TTAB 1981)).  In this case, the registrant uses broad wording (non-medicated skin care preparations) in its identification of goods.  Therefore, the case law requires that the Office presume this broad wording encompasses all kinds of non-medicated skin care preparations—including the skin, face and body care cleansers, toners, lotions, serums, creams, sun screens, spot treatments, masks and cosmetics identified in the applicant’s identification. See, e.g., Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015); In re N.A.D., Inc., 57 USPQ2d 1872, 1874 (TTAB 2000).  Accordingly, the examining attorney must find the respective goods are highly related, if not identical, found in the same channels of trade and marketed to the same consumers.  As such, they are considered related for purposes of likelihood of confusion analysis.

 

In addition, the registrant’s skin care products are related to the hair care products listed in the application.  As evidence that consumers are accustomed to a single source identifier in relation to these products, the examining attorney encloses ten (10) separate trademark registrations in which the same mark is used in relation to both skin care and hair care products.  These printouts have probative value to the extent that they serve to suggest that the identified products are of a kind that may emanate from a single source.  In re Infinity Broadcasting Corp. of Dallas, 60 USPQ2d 1214, 1218 (TTAB 2001), citing In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); and In re Mucky Duck Mustard Co., Inc., 6 USPQ2d 1467, 1470 at n.6 (TTAB 1988).  As additional evidence establishing that hair care and skin care products are related, found in the same channels of trade, marketed to the same consumers, and commonly produced by the same entity under the same mark, the examining attorney refers to the attached webpages of SUAVE[3] and AVALON ORGANICS[4] showing such use.  Evidence obtained from the Internet may be used to support a determination under Section 2(d) that goods are considered related for likelihood of confusion purposes.  See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009); In re G.B.I. Tile & Stone, Inc., 92 USPQ2d 1366, 1371 (TTAB 2009). 

 

In light of this evidence and the required presumptions under the relevant case law, the examining attorney must find that the respective goods are related in that they are consistently found in the same channels of trade and marketed to, or encountered by, the same consumers under a single mark—a situation that would necessarily give rise to a mistaken belief by consumers that these goods come from a common source, when in fact, they do not.  As such, the respective hair care and skin care goods are considered related for purposes of likelihood of confusion analysis.

 

In sum, given the similarity between the respective marks when viewed in light of the relatedness between the respective goods as well as the similarity between the channels of trade for such goods, it is likely that consumers will be confused as to the ultimate source of these products and associate the registered mark with the applicant’s proposed mark.  Accordingly, the examining attorney refuses registration of the applicant’s proposed mark.

 

Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.

 

II.        INFORMALITIES

 

If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following issue(s):

 

Application Refused—Applicant Improperly Identified the Goods

The applicant has provided this Office with the following identification:

 

Cosmetics; Skin, face and body care products, namely, cleansers, toners, lotions, serums, creams, sun screens, spot treatments, and masks; Makeup; Hair and hair care products, namely, shampoos, conditioners, serums, masks, coloring, styling and treatment products, in International Class 003.

 

The current identification needs clarification because it could include goods classified in other international classes. See TMEP §§1402.01, 1402.03.  Specifically, the proper classification of the applicant’s skin care, hair care and hair coloring products depends on their nature.  Medicated skin care products are properly classified in International Class 005, non-medicated skin and hair care products are properly classified in International Class 003, while hair coloring caps and foils are properly classified in International Class 026.

 

Accordingly, as more fully detailed below, the applicant must (1) add one or more International Class(es) to the application, and reclassify the goods therein, or (2) delete the goods from the application.  See 37 C.F.R. §§2.86, 6.1; TMEP §§1403 et seq.  If the applicant adds one or more International Classes to the application, the applicant must comply with the multiple-class requirements specified in this Office action.

 

In addition, the wording in the recitation of goods is unacceptable as indefinite and must be clarified. TMEP §1402.01.  Based on the applicant’s description, the examining attorney cannot determine the kinds, types and nature of the spot treatments, masks, skin care and hair care products.  The language the applicant used fails to adequately describe these products such that the average person would readily understand what the goods are. 

 

The applicant must amend the recitation to specify the common, ordinary commercial name of the goods.  If there is no common commercial name for the products, the applicant must adequately describe the nature of the goods, using wording that would be generally understood by the average person.  See Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954); Schenley Indus., Inc. v. Battistoni, 112 USPQ 485, 486 (Comm’r Pats. 1957); TMEP §1402.01.  In such a case, the applicant should describe the nature of the goods and their main purpose, as well as indicate the channel of trade, intended consumer and intended use(s). 

 

The applicant may amend the identification to substitute the following wording, if accurate:

 

Proposed identification for International Class 003:

 

Non-medicated cosmetics; Skin, face and body care products, namely, ____________ [applicant must identify the good using its common commercial name e.g. Non-medicated skin and facial cleansers, Non-medicated skin toners, Non-medicated skin moisturizing lotions, Non-medicated skin serums, Non-medicated skin creams, Non-medicated sun screens, Non-medicated spot treatments in the nature of age spot reducing creams, and Non-medicated facial and beauty masks]; Non-medicated makeup; Hair and hair care products, namely, ____________ [applicant must identify the good using its common commercial name e.g. Non-medicated shampoos and conditioners, Non-medicated hair serums, Non-medicated hair masks, Hair colorants]; Non-medicated hair styling and treatment products, namely, ____________ [applicant must identify the good using its common commercial name e.g. Hair styling gel, Non-medicated hair treatment preparations for cosmetic purposes].

 

Proposed identification for International Class 005:

 

Medicated cosmetics; Skin, face and body care products, namely, ____________ [applicant must identify the good using its common commercial name e.g. Medicated skin and facial cleansers, Medicated skin toners, Medicated skin moisturizing lotions, Medicated skin serums, Medicated skin moisturizing creams, Medicated sun screens, Medicated spot treatments in the nature of age spot reducing creams]; Medicated makeup; Hair and hair care products, namely, ____________ [applicant must identify the good using its common commercial name e.g. Medicated shampoos and conditioners, Medicated hair serums, Medicated hair masks]; Non-medicated hair styling and treatment products, namely, ____________ [applicant must identify the good using its common commercial name e.g. Medicated hair treatment preparations].

 

Proposed identification for International Class 026:

 

Hair coloring products, namely, ____________ [applicant must identify the good using its common commercial name e.g. Hair coloring caps, Hair coloring foils].

 

PLEASE NOTE:  General Guidelines Regarding the Scope of Acceptable Identification Amendments

The applicant’s goods may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  The applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods or add goods not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).

 

The applicant may not substitute different goods or add goods not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods establishes the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods will further limit scope, and once goods are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).  Therefore, the applicant may not subsequently amend the identification to include any product or service that is not within the scope of the goods originally set forth in the application or a previously accepted identification amendment thereto.

 

Online Identification Reference Provided by the USPTO

For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

 

Requirements for a Multiple-Class Application

The application identifies goods in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(1)       List the goods by their international class number in consecutive numerical order, starting with the lowest numbered class.

 

(2)       Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule).  The application identifies goods that are classified in at least three (3) international classes; however, applicant submitted a fee(s) sufficient for only one (1) international class.  Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

Applicant’s Response

There is no required format or form for responding to an Office action.  For this application to proceed further, the applicant must explicitly address each refusal and/or requirement raised in this Office action.  If the action includes a refusal, the applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register.  The applicant may also have other options specified in this Office action for responding to a refusal and should consider those options carefully.  To respond to requirements and certain refusal response options, the applicant should set forth in writing the required changes or statements.  For more information and general tips on responding to USPTO Office actions, response options, and how to file a response online, see “Responding to Office Actions” on the USPTO’s website.

 

If the applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end and the trademark will fail to register.  See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a); TMEP §§718.01, 718.02.  Additionally, the USPTO will not refund the application filing fee, which is a required processing fee.  See 37 C.F.R. §§2.6(a)(1)(i)-(iv), 2.209(a); TMEP §405.04.

 

When an application has abandoned for failure to respond to an Office action, an applicant may timely file a petition to revive the application, which, if granted, would allow the application to return to active status.  See 37 C.F.R. §2.66; TMEP §1714.  The petition must be filed within two months of the date of issuance of the notice of abandonment and may be filed online via the Trademark Electronic Application System (TEAS) with a $100 fee.  See 37 C.F.R. §§2.6(a)(15)(ii), 2.66(a)(1), (b)(1).

 

Responses to Office actions must be properly signed.  See 37 C.F.R. §§2.62(b), 2.193(e)(2); TMEP §§712, 712.01.  If an applicant is not represented by an attorney, the response must be signed by the individual applicant or someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner).  See 37 C.F.R. §2.193(e)(2)(ii); TMEP §§611.03(b), 611.06(b)-(h), 712.01.  In the case of joint applicants, all must sign.  37 C.F.R. §2.193(e)(2)(ii); TMEP §611.06(a). 

 

If an applicant is represented by an attorney authorized to practice before the USPTO, the attorney must sign the response.  37 C.F.R. §2.193(e)(2)(i); TMEP §§611.03(b), 712.01.  The only attorneys who may sign responses and otherwise practice before the USPTO in trademark matters are (1) attorneys in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and U.S. commonwealths and U.S. territories; and (2) Canadian agents and/or attorneys who represent applicants located in Canada and (a) are registered with the USPTO and in good standing as patent agents or (b) have been granted reciprocal recognition by the USPTO.  See 37 C.F.R. §§2.17(e), 2.62(b), 11.1, 11.5(b)(2), 11.14(a), (c); TMEP §§602, 712.01. 

 

If an applicant is initially represented by an attorney, and then later retains another attorney from a different firm, the newly retained attorney may not sign responses until the applicant files a new power and/or revocation of attorney.  See 37 C.F.R. §2.18(a)(7); TMEP §604.03.

 

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.  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.  If the 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/teas/eFilingTips.htm and email technical questions to TEAS@uspto.gov.

 

If the applicant or its appointed attorney has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

/Michael Tanner/

Michael Tanner

Trademark Attorney

Law Office 119

Telephone: 571-272-9706

Email: Michael.Tanner@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.