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: 5/15/2018

 

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.  

 

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.

 

Office 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).

 

Refusal to Register – Section 1 & 45 of Act – Phantom Element

 

Registration is refused because applicant seeks registration of more than one mark in its application.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; see TMEP §1214.01.  Specifically, applicant’s mark includes the name “CASEY LINCOLN” in the lower left corner of applicant’s mark.  The name appears to be a placeholder for a changeable element of applicant’s mark such as the names of the users of applicant’s charge cards, credit cards, pre-paid cards, and the like.

 

Marks that contain phantom elements do not provide sufficient notice to potential consumers and businesses of what the mark consists of when it is actually used in commerce.  See TMEP §1214.01.  Registering these marks could cause confusion about the source of products sold under the mark and prevent business owners from being able to rely on the federal trademark register when adopting their own marks for goods or services. 

 

An application must be limited to one mark.  37 C.F.R. §2.52; see 15 U.S.C. §1051(a)(1).  A mark with a changeable element, as in the present case, is generally considered to be more than one mark.  In re Constr. Research & Tech. GmbH, 122 USPQ2d 1583, 1585-86 (TTAB 2017) (citing In re Primo Water Corp., 87 USPQ2d 1376, 1378 (TTAB 2008)); see In re Int’l Flavors & Fragrances Inc., 183 F.3d at 1366, 1368, 51 USPQ2d at 1516, 1518; TMEP §1214.01.

 

Therefore, applicant should remove the name CASEY LINCOLN  from the drawing of the mark.  A new drawing should be submitted.

 

Special Form Drawing Requirements

 

A “special form drawing” of a mark includes or consists of special characteristics such as elements of design or color, style(s) of lettering, and unusual symbols and forms of punctuation.  TMEP §807.04(a).  The requirements for a special form drawing are as follows:

 

(1)       Shows the mark either in black on a white background, if color is not a feature of the mark, or in color on a white background, if color is a feature of the mark.

(2)       Is of sufficient quality that will reproduce well.  

(3)       Includes in the application a description of all literal and design elements in the mark.  

 

37 C.F.R. §§2.37, 2.52(b), 2.53(b)-(c), 2.54(e); see TMEP §§807.04-.04(a), 808.01-.02.

 

For more information about special form drawings and drawings in general, and instructions on how to submit a drawing, please visit the Drawing webpage.

 

Color Drawing with No Color Claim – Color Not Material – Black & White Drawing or Color Claim/Mark Description Referencing Color Required

 

Applicant must clarify whether color is a feature of the mark because, although the drawing shows the mark in color, the application states that color is not claimed as a feature of the mark. Applications for marks depicted in color must include not only a color drawing but also (1) a complete list of all the colors that are claimed as a feature of the mark and (2) a description of the literal and design elements in the mark that specifies where the colors appear in those elements.  37 C.F.R. §§2.37, 2.52(b)(1); see TMEP §807.07(a)-(a)(ii).

 

Therefore, applicant must clarify whether color is claimed as 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 substitute black-and-white drawing of the mark to replace the color drawing of record.  See TMEP §807.07(a)(i).  However, any other amendments to the mark included in the substitute drawing will not be accepted if the changes would materially alter the mark.  37 C.F.R. §2.72; see TMEP §§807.14 et seq.  Applicant must also submit an accurate and concise description of the literal and design elements in the mark, omitting any reference to color.  37 C.F.R. §2.37; see TMEP §§808.01, 808.02.  The following is suggested, if accurate: 

 

Mark description:  The mark consists of a stylized image of a credit card with a blank oval in the center of the card and the wording AMERICAN EXPRESS at the top of the card.

 

(2)  If color is a feature of the mark, applicant must submit both (a) a statement listing all the colors that are claimed as a feature of the mark and (b) a statement describing the literal and design elements in the mark that specifies where the colors appear in those elements.  37 C.F.R. §§2.37, 2.52(b)(1); 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 them 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 blue and white are claimed as a feature of the mark.”

 

Mark description:  “The mark consists of a stylized image of a white credit card outlined in blue.  In the center of the card is a white oval outlined in blue.  At the top of the card is the wording AMERICAN EXPRESS.  Each letter is white and outlined in blue.

 

See TMEP §807.07(b).

 

Questions Regarding Office Action

 

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.

 

 

 

 

/Russ Herman/

Trademark Examining Attorney

Law Office 101

(571)272-9172

russ.herman@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 5/15/2018 FOR U.S. APPLICATION SERIAL NO. 87880374

 

Your trademark application has been reviewed.  The trademark examining attorney assigned by the USPTO to your application has written an official letter to which you must respond.  Please follow these steps:

 

(1)  Read the LETTER by clicking on this link or going to http://tsdr.gov.uspto.report/, entering your U.S. application serial number, and clicking 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)  Respond within 6 months (or sooner if specified in the Office action), calculated from 5/15/2018, using the Trademark Electronic Application System (TEAS) response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  A response transmitted through TEAS must be received before midnight Eastern Time of the last day of the response period.

 

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. 

 

(3)  Questions about the contents of the Office action itself should be directed to the trademark examining attorney who reviewed your application, identified below. 

 

/Russ Herman/

Trademark Examining Attorney

Law Office 101

(571)272-9172

russ.herman@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.