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: 10/3/2018

The assigned examining attorney has reviewed the referenced application and determined the following.

SEARCH RESULTS

 

The examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02.  However, before the mark can be published, the applicant must address the following.

 

SUMMARY OF ISSUES:

 

• Color drawing
• Identification of goods

 

 

 

COLOR DRAWING

 

The drawing in the U.S. application show the proposed mark in color.  In addition, the U.S. application includes a statement claiming color as a feature of the mark for some or all of the colors in the mark; however, the foreign registration does not explicitly state whether color is claimed as a feature of the mark.

 

The drawing of a mark in a U.S. application must be a substantially exact representation of the mark that appears in the foreign registration.  37 C.F.R. §2.51(c); In re Hacot-Colombier, 105 F.3d 616, 618-19, 41 USPQ2d 1523, 1525 (Fed. Cir. 1997); TMEP §§807.07(d)(ii), 1011.01; see United Rum Merchs. Ltd. v. Distillers Corp. (S.A.), 9 USPQ2d 1481 (TTAB 1988).  To meet this requirement, the color claims in the U.S. application and foreign registration must agree.  See TMEP §§807.07(d)(ii), 1011.01.  Because of the omission of a color claim in the foreign registration, the U.S. application is unclear as to whether applicant intends to claim color as a feature of the mark sought to be registered.

 

Therefore, applicant must clarify whether color is claimed as a feature of the mark by satisfying one of the following:

 

(1)    If the foreign registration includes a color claim or its legal equivalent, applicant must provide the following:  (a) a statement that color is being claimed as a feature of the mark in the foreign registration and the U.S. application, (b) a statement listing all of the colors that are claimed in the mark, and (c) a statement describing the literal and design elements in the mark that specifies where all the colors appear in those elements.  See 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §§807.07(a)(i)-(b), 1011.01.  If black, white and/or gray appear in the mark and are not being claimed as color in the foreign registration, applicant must include 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.  TMEP §807.07(d)(ii).  Generic color names must be used, e.g., magenta, yellow, turquoise.  TMEP §807.07(a)(i)-(a)(ii).  The following format is suggested:  “The foreign registration includes a color claim or its legal equivalent for the colors <specify colors>.  Therefore, the colors <specify colors> are claimed as a feature of the mark in the U.S. application.  The mark consists of the following:  a <specify color> <specify literal or design element on which the color appears, and continue to similarly list each element and the associated colors for each element in the mark, e.g., a red and blue bird on a green mountain>.”; or

 

(2)    If the foreign registration does not include a color claim, applicant must submit a new drawing showing the mark only in black and white and provide a statement that no claim of color is made in the foreign registration.  TMEP §§807.07(b), 1011.01.  However, amendments or changes to the mark in the U.S. application will not be accepted if the changes would materially alter the mark.  37 C.F.R. §2.72(c)(2); TMEP §§807.14, 1011.01.

 

 

 

 

IDENTIFICATION OF GOODS

 

The wording “dietetic substances adapted for medical use” in the identification of goods is indefinite and must be clarified to indicate the type of substances.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  “Dietetic substances adapted for medical use, namely, food and beverages.”

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See TMEP §1402.07(e).

 

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.

 

RESPONDING

 

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.  

 

 

 

/Midge F. Butler/

Trademark Attorney

Law Office 107

571 272 9137

midge.butler@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.