Suspension Letter

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

SUSPENSION NOTICE: NO RESPONSE NEEDED

 

ISSUE/MAILING DATE: 6/27/2018

 

The Office has reassigned this application to the undersigned trademark examining attorney.  This Office action is in response to applicant’s communication filed on 6/25/18.  The examining attorney acknowledges the substitute drawing and description of the mark submitted; however the substitute drawing is a material alteration of the mark as filed and is not permitted.  [See below discussion.]  Furthermore the claim of acquired distinctiveness does not appear to be appropriate because the Q&Z portion of the mark is not descriptive, geographically descriptive, surname, etc.; therefore the requirement to disclaim the descriptive wording COSMETIC TOOLS is repeated and continued.

 

The trademark examining attorney is suspending action on the application for the reason stated below.  See 37 C.F.R. §2.67; TMEP §§716 et seq. 

 

FOREIGN REGISTRATION:  Applicant is required to provide a true copy, a photocopy, a certification, or a certified copy of a foreign registration from applicant’s country of origin that will be in force at the time the United States registration issues.  15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii)-(iii); In re Societe D’Exploitation de la Marque Le Fouquet’s, 67 USPQ2d 1784, 1788-89 (TTAB 2003); TMEP §§1003.04(a)-(b), 1004.01, 1004.01(a).  Action on this application is suspended until the USPTO receives a copy of such foreign registration or proof of its renewal.  TMEP §§716.02(b), 1003.04(a)-(b), 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).  Further, applicant should notify the trademark examining attorney in the event that the foreign application abandons or the foreign registration is not renewed.  See TMEP §§1003.08, 1004.01(a).  In such case, applicant may amend the application to rely on another basis, if appropriate, and will retain the priority filing date, if applicable.  TMEP §§1003.08, 1004.01(a).

 

REFUSAL(S)/REQUIREMENT(S) CONTINUED AND MAINTAINED:  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.  For more information about changes to the mark in the drawing after the application filing date, please go to the Drawing webpage.

 

2)     the requirement to disclaim “COSMETIC TOOLS” apart from the mark as shown.

 

 

The USPTO will periodically conduct a status check of the application to determine whether suspension remains appropriate, and the trademark examining attorney will issue as needed an inquiry letter to applicant regarding the status of the matter on which suspension is based.  TMEP §§716.04, 716.05.  Applicant will be notified when suspension is no longer appropriate.  See TMEP §716.04.

 

No response to this notice is necessary; however, if applicant wants to respond, applicant should use the “Response to Suspension Inquiry or Letter of Suspension” form online at http://teasroa.gov.uspto.report/rsi/rsi.

 

 

 

/Karen K. Bush/

Trademark Examining Attorney

Law Office 108

571-272-9136

Karen.Bush@uspto.gov

 

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 Trademark Electronic Application System (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 6/27/2018 FOR U.S. APPLICATION SERIAL NO.87618491

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.gov.uspto.report/, 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)  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

 

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.