To: | Heaven Williams (hwwilliams2@icloud.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88000202 - HEAVEN - N/A |
Sent: | 5/24/2019 11:25:03 AM |
Sent As: | ECOM121@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88000202
MARK: HEAVEN
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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: Heaven Williams
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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: 5/24/2019
This Office action is supplemental to and supersedes the previous Office action issued on October 15, 2018 in connection with this application. Based on information and/or documentation in applicant’s response, the trademark examining attorney now issues the following new requirement(s) and refusal(s): the new drawing submitted is refused because it consists of a material alteration and the amended Section 1(a) filing basis requirements have not been met. See TMEP §§706, 711.02.
In a previous Office action(s) dated October 15, 2018, applicant was required to satisfy the following requirement(s): specify a filing basis, clarify applicant’s entity type, and clarify the color claim and mark description.
Based on applicant’s response, the trademark examining attorney notes that the following requirement(s) have been satisfied: clarified the entity type. See TMEP §713.02.
The following is a SUMMARY OF ISSUES that applicant must address:
Applicant must respond to all issues raised in this Office action and the previous October 15, 2018 Office action, within six (6) months of the date of issuance of this Office action. 37 C.F.R. §2.62(a); see TMEP §711.02. If applicant does not respond within this time limit, the application will be abandoned. 37 C.F.R. §2.65(a).
AMENDED DRAWING UNACCEPTABLE – MATERIAL ALTERATION
The original drawing shows the mark as the stylized wording “HEAVEN” with stylized design appearing in the upper right hand corner. The proposed amended drawing shows the mark as only the stylized wording “HEAVEN”.
The USPTO cannot accept an amendment to a mark if it will materially alter the mark in the drawing filed with the original application, or in a previously accepted amended drawing. 37 C.F.R. §2.72(a)(2), (b)(2); TMEP §807.14. An amendment to the mark is material when the USPTO would need to republish the mark with the change in the USPTO Trademark Official Gazette to fairly present the mark to the public. In re Thrifty, Inc., 274 F.3d 1349, 1352, 61 USPQ2d 1121, 1123-24 (Fed. Cir. 2001) (citing In re Hacot-Columbier, 105 F.3d 616, 620, 41 USPQ2d 1523, 1526 (Fed. Cir. 1997)); TMEP §807.14.
That is, an amendment is material if the altered mark does not retain “the essence of the original mark” or if the new and old forms do not “create the impression of being essentially the same mark.” In re Hacot-Columbier, 105 F.3d at 620, 41 USPQ2d at 1526 (quoting Visa Int’l Serv. Ass’n v. Life-Code Sys., Inc., 220 USPQ 740, 743-44 (TTAB 1983)); see, e.g., In re Who? Vision Sys., Inc., 57 USPQ2d 1211, 1218 (TTAB 2000) (amendment from “TACILESENSE” to “TACTILESENSE” a material alteration); In re CTB Inc., 52 USPQ2d 1471, 1475 (TTAB 1999) (amendment of TURBO with a design to just the typed word TURBO without design a material alteration).
When determining materiality, the addition of any element that would require a further search of the USPTO database for conflicting marks is also relevant. In re Guitar Straps Online LLC, 103 USPQ2d 1745, 1747 (TTAB 2012) (citing In re Pierce Foods Corp., 230 USPQ 307, 308-09 (TTAB 1986)); In re Who? Vision Sys. Inc., 57 USPQ2d at 1218-19; TMEP §807.14.
In the present case, applicant’s proposed amendment would materially alter the mark in the drawing filed with the original application because the design element that appears in the right hand corner of the original drawing has been completely deleted which would alter the commercial impression of the mark.
To avoid the application from abandoning, applicant must respond to this issue. TMEP §807.17. Applicant may respond by (1) withdrawing the request to amend the drawing, or (2) arguing that the proposed amendment is not a material alteration of the mark.
For more information about changes to the mark in the drawing after the application filing date, please go to the Drawing webpage.
SECTION 1(a) FILING BASIS REQUIREMENTS
In applicant’s response, a Section 1(a) filing basis has been claimed. However, the following below requirements for amending to a Section 1(a) filing basis have not been met.
To amend an application to one based on use of the mark in commerce under Trademark Act Section 1(a), an applicant must provide the following: (1) a statement that “the mark is in use in commerce and was in use in commerce as of the application filing date;” (2) dates of first use of the mark; (3) a specimen for each class and a statement that “the specimen(s) was in use in commerce at least as early as the application filing date;” and (4) verification, in an affidavit or signed declaration under 37 C.F.R. §2.20, of these two statements and the dates of first use. See 37 C.F.R. §2.34(a)(1); TMEP §§903, 904.
For more information about Section 1(a) basis requirements, and instructions on how to satisfy them online using the Trademark Electronic Application System (TEAS) form, please go to the Basis webpage.
MARK DESCRIPTION AND COLOR CLAIM – AMENDMENT REQUIRED
An applicant may seek registration of only one mark in a single application. 37 C.F.R. §2.52; TMEP §807.01; see 15 U.S.C. §1051; In re Int’l Flavors & Fragrances Inc., 183 F.3d 1361, 1366, 51 USPQ2d 1513, 1516-17 (Fed. Cir. 1999); In re Hayes, 62 USPQ2d 1443, 1445-46 (TTAB 2002). A mark with a changeable or “phantom” element such as varying or changing colors is generally considered to be more than one mark. See In re Hayes, 62 USPQ2d at 1445. In addition to the requirement to select one mark, the colors in the drawing of the mark, color claim, and description must match. See 37 C.F.R. §2.52(b)(1); TMEP §§807.07 et seq.
Applicant may clarify whether color is a feature of the mark by satisfying one of the following:
(1) If applicant is not limiting the application to particular colors, applicant must submit a (a) new drawing of the mark in black and white only, with no other colors, (b) statement authorizing deletion of any color claim, if appropriate, and (c) description of the literal and design elements in the mark that omits any reference to color. A registration for a mark with a black-and-white drawing covers depictions of the mark in all possible color combinations and is not limited to any particular color scheme. See In re Data Packaging Corp., 453 F.2d 1300, 1302, 172 USPQ 396, 397 (C.C.P.A. 1972); TMEP §807.14(e)(i). In this case, amending the mark to delete color would not be considered a material alteration; however, any other amendments to the drawing will not be accepted if they would materially alter the mark. 37 C.F.R. §2.72; see TMEP §§807.07(c), 807.14 et seq.
The following description is suggested, if accurate:
The mark consists of the stylized wording “HEAVEN” with dashes in the middle connecting the letters with the letter “H” appearing larger than the rest of the letters; above the letter “V” is the stylized image of an eye with an upside down V shape above the eye design; in the upper right hand corner is an oval design with a semi-circle inside the oval with dash marks coming off the semi-circle with a V shape below the oval and an upside down V shape above the oval.
(2) If applicant is limiting the application to particular colors, applicant must submit a (a) new drawing showing the mark in the specific colors for which registration is sought, or confirm that the original drawing shows the mark for which registration is sought, (b) an amended color claim and description of the mark that deletes the reference changeable or varying colors and restricts the color claim and description to only those colors in the new or original drawing, as appropriate. Generic color names must be used to describe the colors in the mark, e.g., red, yellow, blue. TMEP §807.07(a)(i)-(ii). If black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark, applicant must so specify in the description. See TMEP §807.07(d).
The following color claim and description are suggested, if accurate:
Color claim: The color red is claimed as a feature of the mark.
Description: The mark consists of the stylized wording “HEAVEN” in the color red with dashes in the middle connecting the letters with the letter “H” appearing larger than the rest of the letters; above the letter “V” is the stylized image of an eye with an upside down V shape above the eye design all in red; in the upper right hand corner is an oval design with a semi-circle inside the oval with dash marks coming off the semi-circle with a V shape below the oval and an upside down V shape above the oval all appearing in the color red; white appearing in the mark represents background or transparent areas only and is not claimed as a feature of the mark.
See TMEP §807.07(a)(i)-(ii).
For more information about drawings and instructions on how to submit a color claim and/or description online using the Trademark Electronic Application System (TEAS) form, see the Drawing webpage.
For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
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.
/Geraldine Ingold/
Examining Attorney
Law Office 121
(571) 272-5076
geraldine.ingold@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.