To: | Raffles Investments (Proprietary) Limite ETC. (trademarks@moas.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 87752571 - QWERT - N/A |
Sent: | 4/27/2018 11:09:09 AM |
Sent As: | ECOM106@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 87752571
MARK: QWERT
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Raffles Investments (Proprietary) Limite ETC.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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.
TEAS RF applicants must submit responses and other documents electronically or pay an additional fee per international class. Please see the TEAS RF application response requirements, which are set forth at the end of this Office action.
ISSUE/MAILING DATE: 4/27/2018
The referenced application and voluntary amendment have been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
Voluntary Amendment Accepted in Part
Applicant’s clarification of the entity type set forth in a voluntary amendment dated January 17, 2018 is accepted because this involves correcting an inconsistency between the entity designation in applicant’s name “(Proprietary) Limited” and the original entity type listed in the application. TMEP §1201.02(c). However, applicant’s request to amend the country of organization without any explanation or documents evidencing chain of title is not accepted, as explained below. TMEP §713.02.
Results of Trademark Act Section 2(d) Search
The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
Summary of Issues that Applicant Must Address
1. Requirement to Clarify Request to Amend Country of Organization
2. Requirement to Clarify the Identification of Services
3. Multiple Class Requirements (if applicable)
4. Requirement for a True Copy of Applicant’s Foreign Registration
· ADVISORY - Foreign Application is Not From Applicant’s Country of Origin
Requirement to Clarify Request to Amend Country of Organization
In a voluntary amendment dated January 17, 2018, applicant sought to amend the country of organization from the United Kingdom to Namibia; however, applicant has not provided a reason for this request, or provided or recorded documentation showing a change in the country of organization. The request to change the country of organization raises a question regarding whether the proper party filed the original application. Therefore, applicant must clarify whether the proper party filed the original application. In addition, the request to amend the country of organization is denied until clear chain of title has been established or the applicant has otherwise submitted a valid explanation for the proposed change. See 37 C.F.R. §2.61(b); TMEP §814.
(1) Recording an assignment or other documentation affecting title with the USPTO's Assignment Recordation Branch showing a clear chain of title; and (b) promptly notify the trademark examining attorney that the documentation has been recorded; OR
(2) Filing a written statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20, explaining in detail the chain of title; or (b) documentation showing the change in the country of organization.
TMEP §502.01; see 15 U.S.C. §1060; 37 C.F.R. §§2.193(e)(1), 3.73(b)(1); TMEP §502.02(a).
Assignments and other documents affecting title may be filed electronically. There is a fee for recording ownership changes. 37 C.F.R. §§2.6(b)(6), 3.41(a); TMEP §503.03(d). Recording an assignment or other ownership transfer document does not constitute a response to an Office action. TMEP §503.01(d). Applicant must still file a separate response to this Office action. See id.
If the party applying to register the mark is in fact the owner of the mark, but there is a typographical error or other minor mistake in the manner the owner information is set forth in the application, the mistake may be corrected by amendment. U.S. Pioneer Elecs. Corp. v. Evans Mktg., Inc., 183 USPQ 613, 614 (Comm'r Pats. 1974); TMEP §1201.02(c) (providing examples of correctable and non-correctable errors).
For example, if “Raffles Investments (Proprietary) Limited, a proprietary limited company of the United Kingdom” did not exist as a legal entity on the filing date of the application and applicant was, in fact, organized under the laws of Namibia as of the application filing date, then applicant must provide a statement to that effect, e.g., “Raffles Investments (Proprietary) Limited, a proprietary limited company of the United Kingdom, did not exist as a legal entity on the filing date of the application. Raffles Investments (Proprietary) Limited was a proprietary limited company of Namibia as of the application filing date.” See TMEP §1201.02(c)(7).
Requirement to Clarify the Identification of Services
The wording “advertising” and “advertising particularly services for the promotion of goods” in the identification of services should be clarified by adding the word “services” after the term “advertising.” See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “market research and marketing studies” in the identification of services is indefinite and must be clarified to indicate the nature of the services offered with respect to marketing studies, e.g., “market research and conducting marketing studies.” See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “compilation of computer databases” in the identification of services is indefinite and must be clarified because the nature of the services is not clear from the present wording. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may clarify the services as “compilation of information into computer databases” in International Class 35, if accurate.
The wording “risk management consultancy” in the identification of services must be clarified because it is too broad and could include services in other international classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. For example, this wording could encompass “business risk management consultancy” in International Class 35 and “financial risk management consultancy” in International Class 36. Therefore, applicant must further specify the nature of the risk management consultancy services and classify the services in the proper international class(es). Please note that consultancy services are classified according to the subject matter of the services. TMEP §1402.11(e).
Scope Advisory
Suggested Amendments
Applicant should note that any wording in bold or in bold italics below offers guidance and/or shows the changes being proposed for the identification of
goods and/or services. If there is wording in applicant’s version of the identification of goods and/or services that should be removed, it will be shown in bold with a line through it such as
this: strikethrough. Applicant should enter its amendments in standard font.
Applicant may adopt the following identification of services, if accurate:
International Class 35: Provision of information and advice to consumers regarding the selection of products and items to be purchased; organizing exhibitions for commercial or advertising purposes; arranging of exhibitions for commercial purposes; demonstration of goods for promotional purposes; Publicity and sales promotion services; provision of business and commercial information; business consultancy services; assistance and advice regarding business organization and management; advertising services; advertising services particularly services for the promotion of goods; arranging of contracts for the purchase and sale of goods and services, for others; market research and conducting marketing studies; compilation of information into computer databases; providing office functions; business risk management consultancy; employment agency services; personnel recruitment services; temporary personnel employment services; placement of permanent personnel
International Class 36: Financial risk management consultancy
For assistance with identifying and classifying services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
Multiple Class Requirements – Section 44
Applicant must clarify the number of classes for which registration is sought.
If applicant adopts the suggested amendment of the services, then applicant must amend the classification to International Classes 35 and 36. See 37 C.F.R. §2.32(a)(7), 2.85; TMEP §805, 1401.
(1) List the goods and/or services 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 already paid (view the USPTO’s current fee schedule). The application identifies services that are classified in at least 2 classes; however, applicant submitted a fee sufficient for only 1 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 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
Requirement for a True Copy of Applicant’s Foreign Registration
An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin. 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016. In addition, the applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law. 15 U.S.C. §1126(b); TMEP §§1002.01, 1004.
Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available. TMEP §1003.04(a). A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin. TMEP §1004.01. If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, the applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin. TMEP §1016. In addition, applicant must also provide an English translation if the foreign registration is not written in English. 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).
If the foreign registration is not yet available, applicant should inform the trademark examining attorney that the foreign application is still pending and request that the U.S. application be suspended until a copy of the foreign registration is available. TMEP §§716.02(b), 1003.04(a).
If applicant cannot satisfy the requirements of the Section 44(e) basis, applicant may amend the basis to Section 1(a) or 1(b), if applicant can satisfy the requirements for the new basis. See 15 U.S.C. §§1051(a)-(b), 1126(e); TMEP §806.03. Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration. See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.03(h).
ADVISORY – Foreign Application is Not From Applicant’s Country of Origin
In the present case, the U.S. application shows that applicant has a domicile in the United Kingdom, but the foreign application was filed in Namibia.
Because applicant’s domicile is in a country different from the country in which the foreign application was filed, and from which the foreign registration will issue, applicant will need to establish that this country is applicant’s country of origin as of the date of issuance of the foreign registration. See 15 U.S.C. §1126(c); TMEP §§1002.02, 1002.04. This requirement may be satisfied by providing the following written statement for the record, once the foreign registration issues: “Applicant has had a bona fide and effective industrial or commercial establishment in Namibia as of the date of issuance of the foreign registration.” TMEP §1002.04.
If applicant will not be able to assert that the country in which the foreign registration has issued is applicant’s country of origin, registration under Section 44(e) will be refused. See 15 U.S.C. §1126(c); TMEP §1002.01-.02. In that case, applicant may delete the Section 44(e) basis and substitute Section 1(a) or 1(b), if applicant can satisfy all the requirements for the new basis. See 15 U.S.C. §§1051(a)-(b), 1126(e); 37 C.F.R. §2.35(b); TMEP §§806.03, 1002.02. However, applicant may still retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, if applicant’s U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date and applicant has a continuing valid basis for registration. See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.03(h).
If applicant has any questions about this Office action, please contact the undersigned examining attorney.
/Linda Lavache/
Trademark Examining Attorney
Law Office 106
p. 571.272.7187
f. 571.272.9106
linda.lavache@uspto.gov (informal inquiries only)
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.
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.
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.