To: | Soto, Emmanuel (Emmanuel@balanceuniversity.net) |
Subject: | U.S. TRADEMARK APPLICATION NO. 87859691 - BALANCE - N/A |
Sent: | 9/17/2018 3:04:19 PM |
Sent As: | ECOM115@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 87859691
MARK: BALANCE
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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: Soto, Emmanuel
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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.
ISSUE/MAILING DATE: 9/17/2018
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.
This Office action is in response to applicant’s communication filed on August 23, 2018.
The applicant has (1) submitted a substitute drawing, and (2) submitted a color claim and amended description of the mark. The applicant did not respond to the requirement for an acceptable identification of goods in International Class 9. The color claim and description present a new issue requiring consideration. The requirement for an acceptable identification of goods in International class 9 is maintained and made FINAL.
Black and White Drawing with Color Claim
Amending a mark to add color is permitted only if the change would not materially alter the mark. See 37 C.F.R. §2.72; TMEP §807.14. In the present case, color is not material to the commercial impression of the mark; however, any other amendments to the applied-for mark will not be accepted if the changes would materially alter the mark. 37 C.F.R. §2.72; see TMEP §§807.07(e), 807.14 et seq.
Therefore, applicant must clarify whether color is a feature of the mark by satisfying one of the following:
(1) If color is not a feature of the mark, applicant must submit (a) a statement that color is not a feature of the mark and (b) an accurate and concise description of the literal and design elements in the mark, omitting any reference to color. See 37 C.F.R. §2.37; TMEP §§808.01, 808.02. The following mark description is suggested, if accurate:
The mark consists of a yin yang symbol with the word “BALANCE” underneath.
(2) If color is a feature of the mark, applicant must (a) submit a substitute color drawing that agrees with the colors in the color claim, (b) ensure that the color claim lists all the colors that are claimed as a feature of the mark, and (c) submit a statement describing the literal and design elements in the mark that specifies where all the colors appear in those elements. 37 C.F.R. §§2.37, 2.52(b)(1); see TMEP §807.07(a)-(a)(ii). Generic color names must be used to describe the colors in the mark, e.g., magenta, yellow, turquoise. TMEP §807.07(a)(i)-(ii). If black, white, and/or gray are not being claimed as a color feature of the mark, applicant must exclude these from the color claim and include in the mark description a statement that the colors black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark. See TMEP §807.07(d). The following color claim and mark description are suggested, if accurate:
Color claim: “The colors {specify colors} are claimed as a feature of the mark.”
Mark description: “The mark consists of a ying yang symbol in the color{s} {indicate colors} with the word “BALANCE” underneath in the color{s} {indicate colors}.”
TMEP §807.07(e).
Identification of Goods
The identification of goods in International Class 25 is acceptable.
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.”
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
Applicant may adopt the following wording, if accurate:
International Class 9: Computer application software for mobile phones, namely, software for {specify function or purpose, e.g., recording exercise routine, tracking fitness routine, storing fitness data, nutrition data collection and analysis, etc.} in the field of fitness, nutrition and mindfulness
International Class 25: Hats; Hoodies; Jackets; Shoes; Shorts; Sweaters; Sweatpants; Sweatshirts; T-shirts; Tank-tops
Advisory – Trademark Counsel
For attorney referral information, applicant may consult the American Bar Association’s Consumers’ Guide to Legal Help; an online directory of legal professionals, such as FindLaw®; or a local telephone directory. The USPTO, however, may not assist an applicant in the selection of a private attorney. 37 C.F.R. §2.11.
Response Guidelines
For this application to proceed further, applicant must explicitly address each refusal and/or requirement raised in this Office action. If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register. 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, 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 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).
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.”
/Michael J. Souders/
Trademark Examining Attorney
Law Office 115
(571) 272-9483
michael.souders@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.