Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

NONFINAL OFFICE ACTION

 

The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned.  Respond using the Trademark Electronic Application System (TEAS).  A link to the appropriate TEAS response form appears at the end of this Office action. 

 

 

Issue date:  July 24, 2019

 

Action on this application was suspended pending the outcome of Application Serial no. 87447403 for the mark AQUATEK.  That application has resulted in abandonment.  Therefore, the citation to this prior pending application is hereby withdrawn.

 

The following refusal(s) and/or requirement(s) has/have been satisfied: initial requirement for information.  TMEP §§713.02, 714.04.

 

The following refusal(s) and requirement(s) is/are continued and maintained: 1) refusal pursuant to Trademark Ace Section 2(d); and 2) requirement for a disclaimer statement.

 

The following new refusal(s) and/or requirement(s) apply.

REQUIREMENT FOR ADDITIONAL INFORMATION

 

Applicant has not responded fully to the questions posed in the previous Office action.  In particular, the applicant has not specified or provided information about the technology featured by applicant’s goods, if any. Therefore, applicant must clarify its answers to the previous questions posed by responding to the following questions for the application record:

1)    What technology do the applicant’s goods require for design and/or manufacturing?

2)    To what technology does the applicant refer when in states in its response to question four “the technology used to manufacture applicant’s goods”?

3)    In general, what manufacturing process(es) is/are used to design applicant’s goods?

4)    In general, what manufacturing process(es) is/are used to manufacture applicant’s goods?

5)    Do applicant’s goods feature any technological features that enable them to perform any particular function or possess any particular features?

6)    Do any of applicant’s goods feature or possess a mechanism of any kind?

a.     If so, which of the goods and what mechanism(s) or mechanics do they feature or possess?

7)    Do applicant’s water toys or other goods include squirt guns?

a.     Do these squirt guns feature a mechanism?

b.     Please describe this mechanism generally.

8)    Is the design of applicant’s goods the result of CAD-CAM or any similar design and manufacturing method?

a.     If so, please indicate which kind and provide examples to clarify and explain how they are applied to the goods.

9)    Are any of applicant’s goods waterproof?

10) Are any of applicant’s goods water resistant?

11) What material(s) and/or equipment enable applicant’s goods to be used in and/or around water?

a.     Please indicate which kind and provide examples to clarify and explain how they are applied in the manufacturing of the goods.

12) Do any of applicant’s written or posted marketing or other materials reference, describe or discuss these features and/or technology?

a.     If so, please provide a copy and the URL, if the material is available online.

13) Are any of applicant’s goods designed to enable consumers to grip them more effectively during use?

a.     If so, what material(s) and/or equipment enable applicant’s goods to be gripped more effectively during use?

14) Are applicant’s goods or any of their components the subject of any patent application(s) and/or registration(s) or patent license(s)?

a.     If so, please provide copies of the application(s) and/or registration(s) along with a summary of each and the application or registration number(s), (if a license, please identify the part(s) and/or item(s) that are the subject of the license and any patent application(s) and/or registration(s) that apply/applies to the license).

 

This information is necessary to evaluate accurately and fully the registrability of the applicant’s proposed designation. 37 C.F.R. Section 2.61(b); TMEP §814.  If the applicant does not provide the information required herein, registration may be refused.  The Trademark Rules of Practice have the effect of law and failure to comply with a request for information is grounds for refusal of registration.  See, e.g., In re Joseph Edward Page, 1999 TTAB LEXIS 229 (TTAB 1999); In re Babies Beat, Inc., 13 USPQ2d 1729 (TTAB 1990); In re Big Daddy's Lounges, Inc., 200 USPQ 371 (TTAB 1978); In re Air Products and Chemicals, Inc., 192 USPQ2d 84, 85-86 (TTAB 1976); and In re Morrison Industries, Inc., 178 USPQ 432, 433-34 (TTAB 1973).   

 

By presenting to the Office any paper, including a response, the practitioner is certifying that all statements made therein of the party’s own knowledge are true and are, to the best of the party's knowledge, information and belief, formed after an inquiry reasonable under the circumstances, made with the knowledge that any practitioner who knowingly and willfully falsifies, conceals, or covers up by any trick, scheme, or material fact, or knowingly and willfully makes any false, fictitious, or fraudulent statements or representations, or knowingly and willfully makes or uses any false writing or document knowing the same to contain any false, fictitious, or fraudulent statement or entry, shall be subject to the penalties set forth under 18 U.S.C. §1001 and any other applicable criminal statute, and violations of the provisions of this section may jeopardize the probative value of the paper.  See 37 CFR §11.18(b)(2). 

 

RESPONSE GUIDELINES

 

There is no required format or form for responding to an Office action.  The Office recommends applicants use the Trademark Electronic Application System (TEAS) to respond to Office actions online at http://www.gov.uspto.report/teas/index.html.  However, if applicant responds on paper via regular mail, the response should include the title “Response to Office Action” and the following information:  (1) the name and law office number of the examining attorney, (2) the serial number and filing date of the application, (3) the mailing date of this Office action, (4) applicant’s name, address, telephone number and e-mail address (if applicable), and (5) the mark.  37 C.F.R. §2.194(b)(1); TMEP §302.03(a).

 

The response should address each refusal and/or requirement raised in the Office action.  If a refusal has issued, applicant can argue against the refusal; i.e., applicant can submit arguments and evidence as to why the refusal should be withdrawn and the mark should register.  To respond to requirements, applicant should set forth in writing the required changes or statements and request that the Office enter them into the application record.

 

E-mail may not be used to file responses to Office actions.  These documents may be filed electronically using TEAS.  TMEP § 304.02.  Further, e-mail may not be used to request an advisory opinion as to the likelihood of overcoming a refusal or requirement. 

 

QUESTIONS ABOUT THIS ACTION

 

As noted above, if 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/trademarks/teas/e_filing_tips.jsp and send technical questions to TEAS@uspto.gov via e-mail.

 

For status inquiries, an applicant may check the status of or view documents filed in his or her trademark and/or service mark application or registration 24 hours a day, 7 days a week using the Trademark Status and Document Retrieval (TSDR) database on the USPTO website at http://tsdr.gov.uspto.report/.  To obtain this status or view these documents, enter the application serial number or registration number and click on “Status” or “Documents.”

 

For all other non-legal matters, including petitions to revive or reinstate an application, please contact the Trademark Assistance Center (TAC).  TAC may be reached by e-mail at TrademarkAssistanceCenter@uspto.gov or by telephone at (800) 786-9199.  For non-technical matters, TAC is open from 8:30 a.m. to 8:00 p.m. Eastern Standard Time (EST), Monday through Friday, except on federal government holidays.  A list of federal government holidays is available at the following website: http://www.opm.gov/policy-data-oversight/snow-dismissal-procedures/federal-holidays/#url=2014.

 

If applicant has questions regarding the legal issues in this Office action, applicant may call the assigned trademark examining attorney.

 

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.  

 

 

How to respond.  Click to file a response to this nonfinal Office action  

 

 

/efennessy/

Edward Fennessy

Examining Attorney, Law Office 114

571-272-8804

Edward.Fennessy@USPTO.Gov

 

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on July 24, 2019 for

U.S. Trademark Application Serial No. 87773967

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/efennessy/

Edward Fennessy

Examining Attorney, Law Office 114

571-272-8804

Edward.Fennessy@USPTO.Gov

 

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from July 24, 2019, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond.

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”