To: | Zheng Xu (info@chenabogados.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 87618491 - Q&Z - N/A |
Sent: | 2/4/2019 1:09:54 PM |
Sent As: | ECOM108@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 87618491
MARK: Q&Z
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://teasroa.gov.uspto.report/rsi/rsi
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APPLICANT: Zheng Xu
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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SUSPENSION INQUIRY: RESPONSE REQUIRED
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: 2/4/2019
FOREIGN REGISTRATION: The trademark examining attorney previously suspended action on this application pending receipt of a true copy, a photocopy, a certification, or a certified copy of a foreign registration from applicant’s country of origin or proof of renewal of the foreign registration.
Applicant must specify the status of the relevant foreign application or registration renewal. TMEP §§716.02(b), 716.05, 1003.04(c); see 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii)-(iii).
Applicant must respond to this inquiry to avoid abandonment and may do so by (1) stating that the foreign application or renewal is still pending or (2) submitting a true copy, a photocopy, a certification, or a certified copy of the foreign registration or renewal document. TMEP §§716.05, 1003.04(c), 1004.01(a). If the foreign registration or renewal document is not in English, applicant must provide an English translation. 37 C.F.R. §2.34(a)(3)(ii)-(iii); TMEP §1004.01(b).
REFUSALS/REQUIREMENTS CONTINUED: The following refusal(s)/requirement(s) is/are continued and maintained:
1) the requirement to submit an acceptable clear drawing of the mark, as well as clarify whether color is being claimed as a feature of the mark;
Applicant has requested to amend the mark in the application; however the proposed changes are not accepted because they would materially alter the mark in the drawing filed with the original application. 37 C.F.R. §2.72(a)(2), (b)(2); TMEP §807.14. Accordingly, the proposed amendment will not be entered; the previous drawing of the mark will remain operative and the initial drawing is still not acceptable. See TMEP §807.17.
The original drawing shows the mark as Q&Z COSMETIC TOOLS. The proposed amended drawing shows the mark as Q&Z. An amendment to a mark will not be accepted if the change would materially alter the mark in the drawing filed with the original application, or as acceptably amended. 37 C.F.R. §2.72(a)(2), (b)(2); TMEP §807.14. The general test for determining whether an amendment to the mark is material is whether the mark would need to be republished in the USPTO’s Trademark Official Gazette after the change in order to fairly present the mark to the public. In re Thrifty, Inc., 274 F.3d 1349, 1352, 61 USPQ2d 1121, 1123-24 (Fed. Cir. 2001) (citing In re Hacot-Columbier, 105 F.3d 616, 620, 41 USPQ2d 1523, 1526 (Fed. Cir. 1997)); TMEP §807.14.
That is, if the altered mark does not retain “the essence of the original mark”; if the new and old forms do not “create the impression of being essentially the same mark,” then the alteration is material. In re Hacot-Columbier, 105 F.3d at 620, 41 USPQ2d at 1526 (quoting Visa Int’l Serv. Ass’n v. Life-Code Sys., Inc., 220 USPQ 740, 743-44 (TTAB 1983)); see, e.g., In re Who? Vision Sys., Inc., 57 USPQ2d 1211, 1218 (TTAB 2000) (holding the amendment from “TACILESENSE” to “TACTILESENSE” to be a material alteration due to the change in meaning or connotation); In re CTB Inc., 52 USPQ2d 1471, 1476 (TTAB 1999) (holding the amendment of TURBO with a design to just the typed word TURBO without design to be a material alteration, as the design was distinctive matter._
In the present case, the proposed amendment would materially alter the mark in the drawing filed with the original application because the deletion of the wording COSMETIC TOOLS creates a different commercial impression.
2) the requirement to disclaim “COSMETIC TOOLS” apart from the mark as shown.
/Karen K. Bush/
Trademark Examining Attorney
Law Office 108
571-272-9136
Karen.Bush@uspto.gov
TO RESPOND TO THIS LETTER: Go to http://teasroa.gov.uspto.report/rsi/rsi. 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.
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.