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: 9/25/2018

 

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(a) - False Connection Refusal
• Section 2(c ) Refusal – Name Identifying a Particular Living Individual
• Section 2(d) Refusal – Likelihood of Confusion
• Prior-Filed Application
• Identification of Goods
• Disclaimer

 

FALSE CONNECTION REFUSAL

 

Registration is refused because the applied-for mark consists of or includes matter which may falsely suggest a connection with Elon Musk, the business magnate and investor.  Trademark Act Section 2(a), 15 U.S.C. §1052(a).  Although Elon Musk is not connected with the goods provided by applicant under the applied-for mark, Elon Musk is so well-known that consumers would presume a connection.  See id.

 

Under Trademark Act Section 2(a), the registration of a mark that “consists of or comprises matter that may falsely suggest a connection with persons, institutions, beliefs, or national symbols” is prohibited.  In re Pedersen, 109 USPQ2d 1185, 1188 (TTAB 2013).  To establish that an applied-for mark falsely suggests a connection with a person or an institution, the following is required:

 

(1)       The mark sought to be registered is the same as, or a close approximation of, the name or identity previously used by another person or institution.

 

(2)       The mark would be recognized as such, in that it points uniquely and unmistakably to that person or institution.

 

(3)       The person or institution identified in the mark is not connected with the goods sold or services performed by applicant under the mark.

 

(4)       The fame or reputation of the named person or institution is of such a nature that a connection with such person or institution would be presumed when applicant’s mark is used on its goods and/or services.

 

In re Pedersen, 109 USPQ2d at 1188-89; In re Jackson Int’l Trading Co., 103 USPQ2d 1417, 1419 (TTAB 2012); TMEP §1203.03(c)(i); see also Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imps. Co., 703 F.2d 1372, 1375-77, 217 USPQ 505, 508-10 (Fed. Cir. 1983) (providing foundational principles for the current four-part test used to determine the existence of a false connection).

 

In this case, the applicant’s mark is ELON + MUSK, and ELON MUSK is the name of a business magnate and investor who is a lead designer of SpaceX; co-founder, CEO, and product architect of Tesla, Inc.; co-founder and CEO of Neuralink; and co-founder of PayPal. http://www.biography.com/people/elon-musk-20837159

 

See also: See:  http://en.wikipedia.org/wiki/Elon_Musk

 

Due to the renown of the institution or person named in the mark, and the fact that there is no information in the application record regarding a connection with applicant, applicant must specify whether the person or institution named in the mark has any connection with applicant’s goods and/or services, and if so, must describe the nature and extent of that connection.  See 37 C.F.R. §2.61(b); TMEP §1203.03(c)(i). 

 

A combination of terms that, independent of each other would not falsely suggest a connection with another person or institution, may do so when combined.  See, e.g., In re U.S. Bicentennial Soc’y, 197 USPQ 905, 907 (TTAB 1978) (finding that while “U.S.” alone and “BICENTENNIAL” alone may not imply involvement by the Federal Government in the sponsorship of applicant’s goods, the combination of these two terms is “too slick to pass as a legitimate trademark” and falsely suggests a connection).

 

Where a term falsely suggests a connection with a person or institution in violation of Trademark Act Section 2(a), the phonetic equivalent of that term also violates Section 2(a).  See, e.g., In re Cotter & Co., 228 USPQ 202, 204 (TTAB 1985) (“there can be no question . . . that ‘WESTPOINT’ written together as one word is the equivalent of ‘WEST POINT’ written as two words”). Here, the combination of the terms ELON + MUSK seems to identify the well known billionaire.

 

The fact that a person has never used a term in that form as his or her name or identity does not obviate a false suggestion of a connection refusal.  In re Nieves & Nieves LLC, 113 USPQ2d 1629, 1635-36 (TTAB 2015) (holding PRINCESS KATE for a variety of goods falsely suggested a connection with Kate Middleton even though Kate Middleton never used that term herself).  When determining the existence of a false suggestion of a connection, the first prong in the four-part test inquires into whether applicant’s mark is the same as, or a close approximation of, the name or identity of a particular person, regardless of whether the particular person actually used the name or identity himself or herself.  In re Nieves & Nieves LLC, 113 USPQ2d 1639, 1644 (TTAB 2015) ("[T]he initial and critical requirement is that the name (or an equivalent thereof) claimed to be appropriated by another must be unmistakably associated with a particular personality or 'persona.'" (quoting Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imps. Co., 703 F.2d 1372, 1376-77, 217 USPQ 505, 509 (Fed. Cir. 1983))).  Thus, the applied-for mark must only clearly identify a particular person.  In re Nieves & Nieves LLC, 113 USPQ2d at 1644.

 

Based on the above, the mark is refused registration.

 

Applicant should note the following additional ground for refusal.

 

SECTION 2(C ) REFUSAL – NAME IDENTIFYING A PARTICULAR LIVING INDIVIDUAL

 

Registration is refused because the applied-for mark consists of or comprises a name, portrait, or signature identifying a particular living individual whose written consent to register the mark is not of record.  Trademark Act Section 2(c), 15 U.S.C. §1052(c); TMEP §1206; see In re Nieves & Nieves LLC, 113 USPQ2d 1639, 1649-50 (TTAB 2015); In re Hoefflin, 97 USPQ2d 1174, 1175-76 (TTAB 2010).

 

For purposes of Section 2(c), a name in a mark identifies a particular living individual if the person bearing the name will be associated with the mark as used on the goods or services because:  “(1) the person is so well known that the public would reasonably assume a connection between the person and the goods or services; or (2) the individual is publicly connected with the business in which the mark is used.”  In re Nieves & Nieves LLC, 113 USPQ2d 1639, 1650 (TTAB 2015); see In re Hoefflin, 97 USPQ2d 1174, 1175-76 (TTAB 2010); Krause v. Krause Publ’ns, Inc., 76 USPQ2d 1904, 1909-10 (TTAB 2005).

 

A determination that a person is publicly connected with the business in which the mark is being used may be based on evidence that the named individual is well known in the relevant field of goods or services, is associated in some manner with the applicant (e.g., the named individual is a corporate officer or partner of the applicant), and/or is actually connected to the goods or services at issue (e.g., the named individual invented the identified goods in the application), and, as a result, the relevant public will recognize or perceive the name as identifying that particular individual.  See Krause v. Krause Publ’ns Inc., 76 USPQ2d 1904, 1909-10 (TTAB 2005); In re Sauer, 27 USPQ2d 1073, 1075 (TTAB 1993); TMEP §1206.02. 

 

In this case, Elon Musk is the name of a well-known business investor so it is likely that consumers will believe he has invested in the applicant’s cosmetics and grooming products.

 

The fact that a mark also contains other matter, in addition to a name, portrait, or signature, does not alter the requirement for written consent to register from the identified individual.  See Reed v. Bakers Eng’g & Equip. Co., 100 USPQ 196, 199 (PTO 1954). Thus, the fact that the applicant has added a “+” symbol does not obviate the refusal or the requirement to obtain written consent to register the name ELON MUSK.

 

The refusal under Section 2(c) will be withdrawn if applicant provides both of the following:

 

(1)       A statement that the name shown in the mark identifies ELON MUSK, a living individual whose consent is of record.  If the name represents that of a pseudonym, stage name, title and name combination, or nickname, applicant must include a statement that ELON + MUSK identifies the ELON MUSK, a living individual whose consent is of record.

 

(2)       A written consent, personally signed by the individual whose name, signature, or portrait appears in the mark, authorizing applicant to register the identifying matter as a trademark and/or service mark with the USPTO; for example, an applicant may use, if applicable, the following:  “I, ELON MUSK, consent to the use and registration of my ELON MUSK as a trademark and/or service mark with the USPTO.”

 

See TMEP §§813, 813.01(a), 1206.04(a).

 

Applicant is advised that the written consent must include a statement of the party’s consent to applicant’s registration, and not just the use, of the identifying matter as a trademark.  See Krause v. Krause Publ’ns, Inc., 76 USPQ2d 1904, 1912-13 (TTAB 2005); In re New John Nissen Mannequins, 227 USPQ 569, 571 (TTAB 1985); TMEP §1206.04(a).

 

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 3704108 (ELON) AND 2642353 (ELON).  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

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. 

 

 

 

COMPARISON OF THE MARKS

 

Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression.  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)); TMEP §1207.01(b)-(b)(v).  “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.”  In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)); In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988)); TMEP §1207.01(b).

 

 

In the present case, the applicant’s mark is ELON + MUSK, and the registrant’s marks are:  ELON, both owned by the same registrant.

 

The applicant’s mark is the same as the registrant’s marks as to the first term ELON.  Consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark.  See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (“VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (“[T]he dominance of BARR in [a]pplicant’s mark BARR GROUP is reinforced by its location as the first word in the mark.”); Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered” when making purchasing decisions).

 

The applicant has merely added the descriptive term MUSK to the registrant’s mark. Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression.  See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii).  Disclaimed matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant when comparing marks.  See In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Nat’l Data Corp., 753 F.2d at 1060, 224 USPQ at 752; TMEP §1207.01(b)(viii), (c)(ii).

 

Based on the above, the marks are confusingly similar.

 

COMPARISON OF THE GOODS/SERVICES

 

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).

 

 

 

The applicant’s goods are:  Cosmetics, SKIN CARE and Grooming Products.

 

The registrant’s goods are:

 

1) 3-in-1 hair conditioners; 3-in-1 hair shampoos; Hair care creams; Hair care lotions; Hair care preparations; Hair cleaning preparations; Hair conditioner; Hair creams; Hair gels; Hair lotion; Hair lotions; Hair nourishers; Hair pomades; Hair rinses; Hair rinses; Hair shampoo; Hair shampoos and conditioners; Hair styling preparations; Non-medicated preparations all for the care of skin, hair and scalp; Antibacterial skin soaps; Antibacterial soap; Antibacterial hand lotions; Antibacterial handwash; Nail fungus treatment preparations; Athletes' foot lotions; Athletes' foot powders; Athletes' foot preparations; Dietary and nutritional supplements; Mineral nutritional supplements; Nutritional supplements; Nutritional supplements in lotion form sold as a component of nutritional skin care products; Nutraceuticals for use as a dietary supplement;

 

2) Skin and nail care products, namely, nail cream, nail strengtheners, nail hardeners, nail polish, nail polish base coat and nail polish top coat, nail polish remover; nail grooming products, namely, lacquer; nail enamel and nail buffing preparations; skin care products, namely, non-medicated skin serum, skin cleansing lotion, skin conditioners, skin cream, skin cleansing cream, skin lotion, skin moisturizer and skin soap

 

The applicant’s broad and indefinite identification of goods is related to the registrant’s goods because they are likely to include the same skin and grooming products.  Accordingly, the goods would be sold  to the same class of purchasers and encountered under circumstances leading one to mistakenly believe the goods originate from the same source.

 

Please see attached Internet website evidence from 3^rd parties showing the relatedness of the goods.  See the attached pages from: Loreal - http://www.lorealparisusa.com/?cid=cpc|googleSearchBrand|Search%20-%20Brand|Brand%20-%20Short|kw:%20loreal&gclid=EAIaIQobChMItvrs6onW3QIVyFSGCh12MgqGEAAYASAAEgLJ9PD_BwE

 

Neutrogena - http://www.neutrogena.com/?utm_source=google&utm_medium=cpc&utm_campaign=GO-USA-ENG-PS-Neutrogena-BC-BM-RN-DoC-Core&utm_content=Brand-General&utm_term=%2Bneutrogena&gclid=EAIaIQobChMIxpGIjIrW3QIVCh6GCh1-ygB_EAAYASAAEgIZRvD_BwE&gclsrc=aw.ds

 

 

Since the marks are similar and the goods are related, there is a likelihood of confusion as to the source of the applicant’s goods.  Therefore, applicant’s mark is not entitled to registration.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.  If applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.

 

POTENTIAL SECTION 2(d) REFUSAL – EARILIER FILED APPLICATION

 

The filing date of pending U.S. Application Serial No. 87773100 (ELON MUSK) precedes applicant’s filing date.  See attached referenced application.  If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two 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 application.

 

In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application.  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.

 

IDENTIFCATION OF GOODS

 

The identification of goods is indefinite and must be clarified to identify the specific items, e.g., skin care products identifies “medicated soap” in Class 5 and “body cream soap” in Class 3.   See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend the identification to specify the common commercial or generic name of the goods.  See TMEP §1402.01.  If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses.  See id.

 

Applicant may adopt the following wording, if accurate: 

 

Class 3 - Cosmetics, SKIN CARE and Grooming Products, NAMELY [SPECIFY THE ITEMS, E.G.,  HAIR SHAMPOO, BODY CREAM SOAP, EYE LINER, MASCARA, LIPSTICK]

 

Applicant must list the goods and/or services by international class.  TMEP §§801.01(b), 1403.01.

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  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.

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(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 and/or services that are classified in at least 2 classes; however, applicant submitted a fee(s) sufficient for only 1 class.  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 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

DISCLAIMER REQUIRED

 

Applicant must disclaim the wording “MUSK” because it merely describes an ingredient of applicant’s goods, and thus is an unregistrable component of the mark.  See 15 U.S.C. §§1052(e)(1), 1056(a); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); TMEP §§1213, 1213.03(a). 

 

The term MUSK is defined as: “a substance with a strong pleasant smell produced by some animals and used for making perfume”  See attached.  Therefore, the wording merely describes an ingredient of the goods and must be disclaimed.

 

An applicant may not claim exclusive rights to terms that others may need to use to describe their goods and/or services in the marketplace.  See Dena Corp. v. Belvedere Int’l, Inc., 950 F.2d 1555, 1560, 21 USPQ2d 1047, 1051 (Fed. Cir. 1991); In re Aug. Storck KG, 218 USPQ 823, 825 (TTAB 1983).  A disclaimer of unregistrable matter does not affect the appearance of the mark; that is, a disclaimer does not physically remove the disclaimed matter from the mark.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 978, 144 USPQ 433, 433 (C.C.P.A. 1965); TMEP §1213. 

 

If applicant does not provide the required disclaimer, the USPTO may refuse to register the entire mark.  See In re Stereotaxis Inc., 429 F.3d 1039, 1040-41, 77 USPQ2d 1087, 1088-89 (Fed. Cir. 2005); TMEP §1213.01(b).

 

Applicant should submit a disclaimer in the following standardized format:

 

No claim is made to the exclusive right to use “MUSK” apart from the mark as shown.

 

For an overview of disclaimers and instructions on how to satisfy this disclaimer requirement online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/disclaimer.jsp.

 

RESPONSE GUIDELINES

 

To expedite prosecution of the application, applicant is encouraged to file its response to this Office action online via the Trademark Electronic Application System (TEAS), which is available at http://www.gov.uspto.report/trademarks/teas/index.jsp.  If applicant has technical questions about the TEAS response to Office action form, applicant can review the electronic filing tips available online at http://www.gov.uspto.report/trademarks/teas/e_filing_tips.jsp and e-mail technical questions to TEAS@uspto.gov.

 

TRADEMARK FEES:  Effective January 14, 2017, the USPTO increased fees for all trademark applications and related documents filed on paper.  See 81 Fed. Reg. 72694 (Oct. 21, 2016) (codified at 37 C.F.R. parts 2 and 7).  Additionally, the USPTO increased the filing fee for each class of goods or services in a regular Trademark Electronic Application System (TEAS) application and the per class processing fee for a TEAS Plus or TEAS RF application that does not meet the relevant filing requirements.  Id.  Trademark applications and related documents filed on or after January 14, 2017 must comply with the new fees.  See more information for an overview of the changes.  See the fee chart that lists all trademark fee changes.

 

 

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.  

 

 

 

/Andrea D. Saunders/

Trademark Attorney

Law Office 117

571-270-3856

Andrea.Saunders@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 9/25/2018 FOR U.S. APPLICATION SERIAL NO. 88004478

 

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 9/25/2018, 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. 

 

/Andrea D. Saunders/

Trademark Attorney

Law Office 117

571-270-3856

Andrea.Saunders@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.