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: 8/21/2018

 

The Office has received the applicant’s communication filed on July 17, 2018.  The assigned examining attorney has reviewed the prosecution history of the referenced application and determined the following.

 

Prosecution History

In a previous Office Action, the examining attorney: (1) refused registration pursuant to Section 2(d) in light of U.S. Registration No. 4103801.  In addition, the applicant was required to: (1) indicate the meaning of the wording in the proposed mark, and (2) provide a copy of a foreign registration certificate that would support its Section 44(e) filing basis.

 

In its response, the applicant: (1) argued that its proposed mark is not confusingly similar to the registered mark, (2) indicated that the proposed mark means “Juliet,” and (3) (2) provided a filing receipt for a trademark renewal application, and (3) a printout in Italian from the Italian Office of Patents & Trademarks (UIBM).  The applicant’s translation statement is accepted and made part of this application.  Accordingly, the prior requirement indicate the English meaning of the wording in the mark is hereby deemed SATISFIED. 

 

The applicant’s arguments concerning the Section 2(d) refusal have been carefully considered but found unpersuasive.  Accordingly, the prior Section 2(d) refusal based on U.S. Registration No. 4103801 is hereby MAINTAINED and CONTINUED.  The applicant’s documents in support of its Section 44(e) filing basis raise a new issue.  Accordingly, the prior requirement to provide a foreign registration certificate owned by the applicant in support of its Section 44(e) filing basis is hereby MAINTAINED and CONTINUED.  The applicant’s webpage presents a new issue.  Accordingly, the examining attorney issues this NON-FINAL OFFICE ACTION noting the following.

 

Refusal MAINTAINED and CONTINUED—Claimed Foreign Registration Certificate Not Owned by Applicant

Registration is refused under Trademark Act Section 44(e) because the applicant was not the owner of the foreign registration on the filing date of the U.S. application.  See 15 U.S.C. §1126(e); TMEP §1005. 

 

In an application filed under Section 44(e), the applicant must be the owner of the foreign registration on the filing date of the U.S. application.  TMEP §1005; see 37 C.F.R. §2.34(a)(3); In re De Luxe, N.V., 990 F.2d 607, 609, 26 USPQ2d 1475, 1477 (Fed. Cir. 1993); In re Tong Yang Cement Corp., 19 USPQ2d 1689, 1690-91 (TTAB 1991).  In this case, the foreign registration specifies an owner other than the U.S. applicant.  Specifically, the U.S. application sets forth the owner as FCA ITALY S.P.A., while the submitted foreign registration sets forth the original owner as FIAT AUTO S.P.A.  While documents submitted with this application show that a renewal certificate was issued on April 7, 2017, in the name of FCA ITALY S.P.A. for a registration that resulted from Application No. 302006901427804, there is no indication that the foreign registration submitted with this application was based on that application number. 

 

If the applicant can prove the foreign registration was assigned to applicant on or before the filing date of the U.S. application, the Section 44(e) basis can remain in the application.  See TMEP §1005.  The applicant may establish ownership of the foreign registration by submitting (1) a copy of an assignment document, (2) certification from the foreign trademark office that reflects the applicant’s ownership of the foreign registration and the date of the assignment, or (3) a printout from the intellectual property’s office website that shows the foreign registration was assigned to the applicant on or before the filing date of the U.S. application.  See TMEP§§1005, 1006.

 

If the applicant did not own the foreign registration on or before the filing date of the U.S. application, applicant may delete the Section 44(e) basis and rely solely on Section 1(b) as the basis for registration.  See TMEP §806.04. 

 

NEW ISSUE:  Submitted Documents Not Acceptable Because They are Not Translated and Do Not Show that the Claimed Foreign Registration Has Been Renewed and is Owned by the Current Applicant

In its response, the applicant submitted (1) a filing receipt for a trademark renewal application, and (2) a printout from an intellectual property office’s website to satisfy the statutory requirement under Trademark Act Section 44(e) for a true copy, photocopy, certification, or certified copy of a foreign registration from the applicant’s country of origin.  15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01. 

 

As an initial matter the printout from the Italian Trademark Office’s website is not acceptable because: (1) the submitted document was not accompanied by a certification from the issuing intellectual property office, and (2) the document was not written in English.  It is noted that a photocopy of an intellectual property office’s publication or a printout from an intellectual property office’s website is sufficient to satisfy the statutory requirement only if it is accompanied by a certification from the issuing office.  TMEP §1004.01.  The current document is not accompanied by a certification from the issuing office.  In addition, because this printout was not written in English, the examining attorney cannot determine what the document means.

 

An acceptable “copy” is a document that has been issued to applicant by, or certified by, the intellectual property office in applicant’s country of origin.  TMEP §1004.01.  If the applicant’s country of origin does not issue registrations or certificates of extension of protection, the applicant may submit a copy of the international registration that shows that protection of the international registration has been extended to the applicant’s country of origin.  TMEP §1016.  Furthermore, the applicant must submit an English translation of the foreign registration or any document that supports an ownership claim of that registration.  37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b).  The translation should be signed by the translator.  TMEP §1004.01(b).

 

In addition, the filing receipt for a trademark renewal application is not acceptable to support the Section 44(e) filing basis because: (1) there is no indication that the application has been accepted and the noted registration has been renewed, and (2) there is no document demonstrating that the particular registration that serves as support for the applicant’s Section 44(e) filing basis is actually owned by the applicant.

 

Therefore, the applicant must provide a certificate of renewal or other certification from the intellectual property office of the foreign country or a copy of the foreign registration that shows that the foreign registration has been renewed and will be in force at the time the registration issues in the United States and that the applicant is the current owner of that registration certificate.  37 C.F.R. §2.34(a)(3)(iii); TMEP §1004.01(a).  Please Note:  If the certificate of renewal or other certification is not written in English, applicant must also provide an English translation.  See 37 C.F.R. §2.34(a)(3)(iii); TMEP §1004.01(a)-(b).  The translation should be signed by the translator.  See TMEP §1004.01(b).

 

Advisory Notice Concerning Providing Proper Support for the Section 44(e) Filing Basis

In order to clarify the documents that support the Section 44(e) filing basis the applicant is directed to submit: (1) an acceptable copy of the foreign registration certificate (as well as any English translation that may be necessary), (2) an acceptable copy of any assignment notice for the foreign registration (or its renewal) that was issued by the relevant foreign registration office (as well as any English translation that may be necessary), and (3) an acceptable copy of any renewal certificate for the foreign registration that serves as support for the Section 44(e) filing basis (as well as any English translation that may be necessary).

 

Advisory—Applicant Filed Pursuant to Section 1(b) and Section 44(e)—Applicant May Delete a Filing Basis

The application specifies both an intent to use basis under Trademark Act Section 1(b) and reliance on a foreign registration(s) under Section 44(e).  See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.34(a)(2)-(3).  However, the foreign registration alone may serve as a basis for obtaining a U.S. registration.  See 37 C.F.R. §2.34(a)(3); TMEP §806.01(d).  If the applicant wants to rely solely on the foreign registration under Section 44(e) as the basis, the applicant can request deletion of the Section 1(b) basis.  See 37 C.F.R. §2.35(b)(1); TMEP §806.04.  Alternatively, if the applicant wants to rely solely on its intent to use claim under Section 1(b) as the filing basis, the applicant can request deletion of the Section 44(e) filing basis.  See 37 C.F.R. §2.35(b)(1); TMEP §806.04.   

 

Please Note:  Unless the applicant indicates otherwise, the USPTO will presume that the applicant is relying on both Sections 1(b) and 44(e).  Thus, although the mark may be approved for publication, it will not register until an acceptable allegation of use has been filed for the goods and/or services based on Section 1(b).

 

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 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.  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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 8/21/2018 FOR U.S. APPLICATION SERIAL NO. 87633093

 

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 8/21/2018 (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.