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: 5/1/2018

 

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

 

SUMMARY OF ISSUES:

 

• Section 2(d) Refusal – Likelihood of Confusion
• Prior-filed applications
• Identification of Goods – Indefinite
• Foreign Registration – Required

 

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 2583240.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registration.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a consumer would be confused, mistaken, or deceived as to the source of the goods and/or services of the applicant and registrant(s).  See 15 U.S.C. §1052(d).  Determining likelihood of confusion is made on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973).  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017).  However, “[n]ot all of the [du Pont] factors are relevant to every case, and only factors of significance to the particular mark need be considered.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1366, 101 USPQ2d 1713, 1719 (Fed. Cir. 2012) (quoting In re Mighty Leaf Tea, 601. F.3d 1342, 1346, 94 USPQ2d 1257, 1259 (Fed. Cir 2010)).  The USPTO may focus its analysis “on dispositive factors, such as similarity of the marks and relatedness of the goods [and/or services].”  In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); see TMEP §1207.01. 

 

Applicant is seeking registration for the following goods:  "computer hardware; computer software; computer peripherals; electronic data processing equipment; computer networking and data communications equipment; computer components and parts; electronic memory devices; electronic control apparatus; programmed-data-carrying electronic circuits; wires for communication; electrodes; telephones; aerials; batteries; micro processors; keyboards; video films," in International Class 9, "paper; cardboard; printed publications; printed matter; computer printers (Inking ribbons for -); bookbinding materials; books; adhesives for stationery or household purposes; artists' paint brushes; music sheets; music scores; periodical magazines; photographs; stationery and educational supplies; typewriters; Instructional and teaching material (except apparatus); plastic materials for packaging; printing blocks," in International Class 16 and "games; playthings; gymnastic articles not included in other classes," in International Class 28 in connection with the mark "PARASITE EVE".  The cited registration identifies the following goods:  "computer game programs, interactive video computer programs featuring action and adventures, prerecorded compact discs featuring action and adventure stories, interactive CD-ROM programs featuring action and adventures, and printed manuals and documentation sold and packaged as a unit with the aforesaid goods," in International Class 9 in connection with the mark "PARASITE EVE".

 

 

Marks are Identical

 

In a likelihood of confusion determination, the marks in their entireties are compared for similarities in appearance, sound, connotation, and commercial impression.  In re i.am.symbolic, llc, 866 F.3d 1315, 1323, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017); Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b)-(b)(v). 

 

In the present case, applicant’s mark is "PARASITE EVE" and registrant’s mark is "PARASITE EVE".  These marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.”  In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017).  Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods and/or services.  Id.

 

Therefore, the marks are confusingly similar. 

 

 

Goods are Related

 

Applicant is seeking registration for the following goods:  "computer hardware; computer software; computer peripherals; electronic data processing equipment; computer networking and data communications equipment; computer components and parts; electronic memory devices; electronic control apparatus; programmed-data-carrying electronic circuits; wires for communication; electrodes; telephones; aerials; batteries; micro processors; keyboards; video films," in International Class 9, "paper; cardboard; printed publications; printed matter; computer printers (Inking ribbons for -); bookbinding materials; books; adhesives for stationery or household purposes; artists' paint brushes; music sheets; music scores; periodical magazines; photographs; stationery and educational supplies; typewriters; Instructional and teaching material (except apparatus); plastic materials for packaging; printing blocks," in International Class 16 and "games; playthings; gymnastic articles not included in other classes," in International Class 28.  The cited registration identifies the following goods:  "computer game programs, interactive video computer programs featuring action and adventures, prerecorded compact discs featuring action and adventure stories, interactive CD-ROM programs featuring action and adventures, and printed manuals and documentation sold and packaged as a unit with the aforesaid goods," in International Class 9.

 

The goods and/or services are compared to determine whether they are similar, commercially related, or travel in the same trade channels.  See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).

 

The compared goods and/or services need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i).  They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).

 

Determining likelihood of confusion is based on the description of the goods and/or services stated in the application and registration at issue, not on evidence of actual use.  See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)). 

 

The application uses broad wording to describe portions of the relevant goods, i.e., "computer software, computer components and parts, printed publications, printed matter, games, playthings" and the like, which presumably encompasses all goods and/or services of the type described, including registrant’s more narrow identification of goods,  such as " computer game programs, interactive video computer programs featuring action and adventures, prerecorded compact discs featuring action and adventure stories, interactive CD-ROM programs featuring action and adventures, and printed manuals and documentation sold and packaged as a unit with the aforesaid goods."  See, e.g., Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015); In re N.A.D., Inc., 57 USPQ2d 1872, 1874 (TTAB 2000).  Additionally, the goods and/or services of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.”  In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). 

 

To provide further support for the above-referenced contentions, it is well established that companies that provide computer software type goods also often provide computer peripherals, hardware and related goods.  The Trademark Trial and Appeal Board has held that computer hardware products are related to computer software products, such that their marketing under the same or similar marks may be likely to cause source confusion.  See In re TIE/Commc’ns, Inc., 5 USPQ2d 1457, 1458 (TTAB 1987) (holding DATA STAR likely to cause confusion when used in connection with both registrant’s “computer programs recorded on magnetic media” and applicant’s “voice/data communications terminals and parts thereof”); In re Epic Sys. Corp., 228 USPQ 213, 214-15 (TTAB 1985) (holding EPIC for computer software for use in health care facilities likely to be confused with EPIC DATA for “electronic data collection terminals and electronic data collection units”); In re Teradata Corp., 223 USPQ 361, 362 (TTAB 1984) (holding Y NET for computer hardware likely to be confused with XYNET for computer software); Alpha Indus., Inc. v. Alpha Microsystems, 220 USPQ 67, 69, 71-72 (TTAB 1983) (holding ALPHA MICRO for digital computer equipment and programs likely to be confused with ALPHA MICROWAVE for microwave components and subassemblies).

 

Please evidence representative examples and U.S. registrations regarding same (please also see attached evidence):

 

1. Evidence from Sony Playstation and Sony Electronics, http://www.playstation.com/en-us/explore/accessories/, http://www.playstation.com/en-us/explore/games/ps4-games/?console=ps4, http://www.sony.com/electronics/energy-storage-cables and http://www.sony.com/;
2. Evidence from Microsoft, http://www.xbox.com/en-US/, http://products.office.com/en-us/home, http://www.microsoft.com/en-us/windows/windows-laptops and http://www.microsoft.com/en-us/windows/windows-laptops; and
3. U.S. Reg. Nos. 5452091, 5449084, 5449059, 5424609 and 5416512.             

 

Further, it is also well established that companies that provide games generally, provided a variety of types of games, including computer software games as well as related printed materials and publications related thereto.  Please evidence representative examples of such companies and U.S. registrations regarding same (please also see attached evidence):

 

1. Evidence from Mattel, http://shop.mattel.com/shop/en-us/ms/innovation-tech-toys#facet:&productBeginIndex:0&orderBy:&pageView:grid&minPrice:&maxPrice:&pageSize:&contentPageSize:&, http://shop.mattel.com/shop/en-us/ms/games#facet:&productBeginIndex:0&orderBy:&pageView:grid&minPrice:&maxPrice:&pageSize:&contentPageSize:&, http://service.mattel.com/us/instruction_sheets.aspx and http://barbie.mattel.com/shop/en-us/ba/books-magazines#facet:&productBeginIndex:0&orderBy:&pageView:grid&minPrice:&maxPrice:&pageSize:&contentPageSize:&;
2. Evidence from Disney, http://lol.disney.com/games/video-games, http://www.shopdisney.com/toys/games-and-puzzles and http://style.disney.com/; and
3. U.S. Reg. Nos. 5443947, 5433733, 5181969, 5024910 and 4675437.

 

Therefore, applicant's and registrant's goods are considered related for likelihood of confusion purposes.

 

For the avoidance of doubt, however, applicant submits that where the marks of the respective parties are identical or virtually identical, as in this case, the degree of similarity or relatedness between the goods and/or services needed to support a finding of likelihood of confusion declines.  See In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015) (citing In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993)), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017); TMEP §1207.01(a).  Accordingly, the identical nature of the respective marks diminishes the degree of similarity needed between the goods and/or services as to still warrant a likelihood of confusion finding.

 

Based on the foregoing, a likelihood of confusion exists between applicant's mark and the cited registration(s) and registration is refused as to certain goods as detailed above under Section 2(d) of the Trademark Act. 

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.

 

 

 

PRIOR-FILED APPLICATION(S)

 

The effective filing dates of pending U.S. Application Serial Nos. 87299924 and 87299932 precede applicant’s filing date.  See attached referenced applications.  If the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the respective marks.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced applications.

 

In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflicts between applicant’s mark and the marks in the referenced applications.  Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.

 

If applicant responds to the refusal, applicant must also respond to the requirements set forth below.

 

 

IDENTIFICATION OF GOODS – Indefinite

 

Generally

 

The identification of goods and/or services contains parentheses.  Generally, applicants should not use parentheses and brackets in identifications in their applications so as to avoid confusion with the USPTO’s practice of using parentheses and brackets in registrations to indicate goods and/or services that have been deleted from registrations or in an affidavit of incontestability to indicate goods and/or services not claimed.  See TMEP §1402.12.  The only exception is that parenthetical information is permitted in identifications in an application if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity or scope of the identification, e.g., “fried tofu pieces (abura-age).”  Id.

 

Therefore, applicant must remove the parentheses from the identification and incorporate any parenthetical or bracketed information into the description of the goods and/or services.

 

The wording "not included in other classes" in the identification of goods is indefinite and must be deleted and replaced with a definite term, such as “namely,” “consisting of,” “particularly,” or “in particular.”  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03(a).  The identification must be specific and all-inclusive.  This wording is an open-ended term (e.g., “including,” “such as”) that is not acceptable because it fails to identify specific goods.  See TMEP §1402.03(a). 

 

 

Class 9

 

The identification for "computer software" in International Class 9 is indefinite and must be clarified by amending to specify the purpose or function of the software.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.03(d).  If the software is content- or field-specific, applicant must also specify its content or field of use.  See TMEP §1402.03(d).  The USPTO requires such specificity in identifying computer software in order for a trademark examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks.  See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1402.03(d).

 

The following are examples of acceptable identifications for software in International Class 9:  “downloadable mobile applications for managing bank accounts,” “desktop publishing software,” “tax preparation software.”

 

The wording "electronic data processing equipment," "computer networking and data communications equipment," "computer components and parts thereof," "electronic memory devices," "electronic control apparatus" and "wires for communication" in the identification of goods is indefinite and must be clarified because applicant must clarify the nature/type of such equipment e.g., "apparatus, hardware, wireless communication devices for voice, data or image transmission, etc.," components, e.g., "computer peripherals, etc.," devices., e.g., "electronic memories, etc.," apparatus, e.g., "wireless controllers to monitor and control the functioning of other electronic devices, etc." and wires, e.g., "electrical wires for communication, etc."  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording "video films" in the identification of goods for International Class 9 must be clarified because it is too broad and could include goods in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, this wording could encompass downloadable films in International Class 9 or online non-downloadable films in International Class 41.  Further, applicant indicate the subject matter/field of such films, e.g., "mathematics, etc."  See TMEP §1402.03(d). 

 

Class 16

 

The wording "printed publications," "printed matter," "periodical magazines" and "instructional and teaching material" in the identification of goods is indefinite and must be clarified to indicate both the specific physical nature (e.g., pamphlets, brochures, newsletters, journals, or magazines) and the literary subject matter of the publications/matter/material.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.03(e).  For example, “magazines in the field of medicine,” “newsletters about television programs,” and “books and pamphlets in the field of financial classification of companies and securities,” are acceptable in International Class 16.  If the subject matter is not a significant aspect of the publications, the identification may specify the general character or type of the publications; e.g., “general feature magazines” are acceptable in International Class 16.  TMEP §1402.03(e). 

 

The wording "books" in the identification of goods for International Class 16 must be clarified because it is too broad and could include goods in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, this wording could encompass printed type books in International Class 16 or electronic type books in International Class 9.

 

The wording "music sheets" in the identification of goods for International Class 16 must be clarified because it is too broad and could include goods in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, this wording could encompass electronic type music sheets in International Class 9 or printed music sheets in International Class 16.

 

The wording "music scores" in the identification of goods is indefinite and must be clarified because applicant must clarify that such scores are score sheets, if accurate.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording "plastic materials for packaging" in the identification of goods for International Class 16 must be clarified to further indicate the nature of the "plastic materials" to determine classification because such wording is too broad as currently worded and could include goods in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, this wording could encompass plastic film and related goods for packaging in International Class 16 or rigid plastic trays and other rigid plastics in International Class 20.  

 

Class 28

 

The identification for “game” or “games” in International Class 28 must be clarified because it is too broad and could identify goods and/or services in more than one international class.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  For example, “game software” is classified in International Class 9; “board games, card games, and arcade games” are classified in International Class 28; and “entertainment services, namely, providing an on-line board game” and “providing online non-downloadable game software” are services classified in International Class 41.  

 

Therefore, applicant must specify the type of game and, if electronic, the medium in which it is provided (e.g., game software in International Class 9, downloadable game programs in International Class 9, electronic interactive board games for use with an external monitor in International Class 28, providing temporary use of non-downloadable electronic games in International Class 41, providing online non-downloadable game software in International Class 41).  See TMEP §§1402.01, 1402.03.  

 

The wording "playthings" and "gymnastic articles" in the identification of goods is indefinite and must be clarified because applicant must further indicate the nature/specific type of playthings, e.g., "puppet theaters, etc." and articles, e.g., "gymnastic rings, etc."  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

 

Applicant may substitute the following wording, if accurate: 

 

"Computer hardware; computer software for encryption; computer peripherals; electronic data processing apparatus equipment; computer networking hardware and data communications equipment, namely, wireless communication devices for voice, data or image transmission; computer components in the nature of computer peripherals and parts thereof; electronic memory devices in the nature of electronic memories; electronic control apparatus in the nature of wireless controllers to monitor and control the functioning of other electronic devices; programmed-data-carrying electronic circuits; electrical wires for communication; electrodes; telephones; aerials; batteries; microprocessors; keyboards; downloadable video films featuring {indicate subject matter} provided via a video-on-demand service; audio books in the nature of novels; electronic music sheets, downloadable; video and computer game programs," in International Class 9;

 

"Paper; cardboard; printed publications, namely, booklets in the field of {indicate subject matter or field}; printed matter, namely, paper signs, books and newsletters in the field of {indicate subject matter}; computer printers (Inking ribbons for computer printers -); bookbinding materials; flip books; adhesives for stationery or household purposes; artists' paint brushes; printed music sheets; music scores sheets; periodical magazines in the field of {specify subject matter}; photographs; stationery and educational supplies, namely, stationery boxes and teaching tiles; typewriters; Instructional and teaching material in the field of {specify area of use or subject matter} (except apparatus); plastic materials in the nature of plastic film for use as packaging material for {indicate area of use or industry or indicate general use}; printing blocks," in International Class 16;

 

"Plastic materials for packaging, namely, rigid plastic trays," in International Class 20; - ADDED CLASS

 

"Card games; playthings, namely, puppet theaters; gymnastic articles in the nature of gymnastic rings, not included in other classes," in International Class 28; and

 

"Providing films, not downloadable, via video-on-demand transmission services; providing an on-line computer game in the field of {indicate specific field or subject matter}," in International Class 41. – ADDED CLASS

 

 

If applicant adopts the suggested amendment of the goods and/or services, then applicant must amend the classification to International Classes 9, 16, 20, 28 and 41.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§805, 1401.

 

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS – Advisory

 

The application identifies goods and services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 44:

 

(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(s) already paid (view the USPTO’s current fee schedule).  The application identifies goods/services that may be classified in at least 5 classes; however, applicant submitted a fee(s) sufficient for only 3 class(es).  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.

 

 

FOREIGN REGISTRATION – Required

 

The application specifies Trademark Act Section 44(d) as the sole filing basis and indicates that applicant intends to rely on Section 44(e) as a basis for registration; however no copy of a foreign registration was provided.  See 15 U.S.C. §1126(d), (e). 

 

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).  

 

 

 

RESPONSE GUIDELINES

 

If Applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

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.  

 

 

 

/Erin Z. Dyer/

Erin Zaskoda Dyer

Examining Attorney

Law Office 103

(571) 272-9740

erin.zaskoda@uspto.gov (preferred)

 

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 5/1/2018 FOR U.S. APPLICATION SERIAL NO. 87808072

 

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 5/1/2018 (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.