Letter on Petition

United States Patent and Trademark Office (USPTO)

 

U.S. Application Serial No. 88030716   Mark:  CUE
Correspondence Address:         TONY W. WONG        D&R I.P. LAW FIRM        108 N YNEZ AVE        SUITE 128        MONTEREY PARK, CA 91754
Owner:  Zhuo Wen Luo
Reference/Docket No. UST2320A-ZLL   Correspondence Email Address:         tonyw@dnriplaw.com

 

 

PETITION TO DIRECTOR INQUIRY LETTER

 

 

The USPTO must receive petitioner’s response to this letter within 60 days of the issue date below.  Respond using the Trademark Electronic System (TEAS).  A link to the appropriate TEAS response form appears at the end of this letter.  

 

 

Issue date:  April 29, 2020

 

Dear Mr. Wong:

 

The petition to the Director of the United States Patent and Trademark Office (USPTO) regarding the above-identified application was received on January 30, 2020.  See 37 C.F.R. §2.146(a).  The petition is incomplete because it does not include petitioner’s attorney’s relevant U.S. bar information.

 

U.S. Attorney Bar Information Required

 

Petitioner’s attorney must provide the following bar information:  (1) his bar membership number, if the bar provides one; (2) the name of the U.S. state, commonwealth, or territory of his bar membership; and (3) the year of his admission to the bar.  37 C.F.R. §2.17(b)(3).  This information is required for all U.S.-licensed attorneys who are representing trademark applicants or registrants at the USPTO.  Id.  If the attorney’s bar does not issue bar membership numbers, petitioner’s attorney must state this for the record.  See id.

 

How to provide bar information and respond to this letter

 

Petitioner’s attorney must provide the required bar information by using the TEAS Revocation, Appointment, and/or Change of Address of Attorney/Domestic Representative form.  See 37 C.F.R. §2.17(b)(1)(ii). 

 

A separate response to this inquiry letter must be submitted stating that the attorney bar information has been provided.  Use the “Response to Petition to Director Inquiry Letter” form (#12) available at http://www.gov.uspto.report/trademarks-application-process/filing-online/petition-forms to file the required response.

 

 

 

Petition Likely to Be Denied

 

Petitioner is advised that even if it submits its attorney’s bar information, this petition is likely to be denied.

 

When an examining attorney holds an application abandoned because the applicant’s response is incomplete, the applicant may petition the Director to reverse the holding of abandonment. See 37 C.F.R. §2.146(a)(3). However, the Director will only reverse the examining attorney’s holding of abandonment if there has been clear error or an abuse of discretion or, in rare cases, where a petitioner can show that it has substantially complied with the requirements of the statute or rules. TMEP §1713.01; In re P.T. Polymindo Permata, 109 USPQ2d 1256, 1257 (Dir USPTO 2013); In re GTE Educ. Servs., 34 USPQ2d 1478, 1479-80 (Comm’r Pats. 1994); In re Legendary, Inc., 26 USPQ2d 1478, 1479 (Comm’r Pats. 1992).

 

The final Office action issued on May 21, 2019 contained a final refusal under Section 2(d) due to a likelihood of confusion with the marks in U.S. Registration Nos. 5476120 and 5410182, and a final requirement to amend the identification of goods. The examining attorney advised petitioner that it was required to file a response that overcame the outstanding refusal and satisfied the outstanding requirements, and/or to file a notice of appeal to the Trademark Trial and Appeal Board (TTAB) before the end of the six-month period following the issuance of the final Office action, or on or before November 21, 2019.

 

An applicant must respond to an Office action within six months of the issuance date. 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §715.01. However, the only proper response to a final Office action is:  1) a notice of appeal to the TTAB, 2) a request for reconsideration that seeks to overcome any substantive refusals and comply with any outstanding requirements, or 3) a petition to the Director to review a procedural requirement. 37 C.F.R. §2.63(b); TMEP §715.01. The filing of a request for reconsideration does not extend the deadline for filing a notice of appeal or a petition to the Director. 37 C.F.R. §2.63(b)(3); TMEP §715.01. 

 

Petitioner filed a request for reconsideration on October 17, 2019 that included arguments and evidence traversing the Section 2(d) refusal.  Petitioner did not file a notice of appeal. Upon reviewing the request for reconsideration, the examining attorney was not persuaded that the request overcame the outstanding likelihood of confusion refusal or satisfied the outstanding requirement for an amended identification of goods.  As such, the examiner attorney abandoned the application on December 2, 2019 for failure to file a complete response to the final Office action.

 

If the applicant submits a request for reconsideration that is not accompanied by a proper notice of appeal, and the examining attorney is not persuaded by the arguments and/or evidence submitted with the request for reconsideration, the examining attorney is required to abandon the application, treating the request for reconsideration as an incomplete response. TMEP §718.03(a). 

 

Petitioner argues the examining attorney should have provided petitioner with an additional thirty (30) day period in which to complete its response (Petition).  The option to provide an applicant with additional time to perfect a response is discretionary.  Under Trademark Rule 2.65(a)(2), the examining attorney has discretion to grant an applicant 30 days to perfect its response if:

 

(1)   the response was filed within the six-month period;

(2)   the response was a bona fide attempt to advance the examination;

(3)   the response was a substantially complete response to the examining attorney’s action; and

(4)   consideration of some matter or compliance with some requirement was omitted.

 

37 C.F.R. §2.65(a)(2); TMEP §718.03(b).

 

Petitioner’s request for reconsideration presented arguments and evidence against a substantive refusal. The request was not improperly signed, nor did it omit any procedural requirements, such as a supporting specimen declaration.  Further, the final refusal did not appear likely to be resolved with the granting of additional time. TMEP §715.03(a)(ii)(c). As such, the examining attorney was not required to provide petitioner with an additional thirty days in which to make additional arguments against the refusals.

 

Petitioner additionally argues the “examining attorney provided inadequate explanation of the reasons for abandonment” (Petition).  However, the examining attorney is not required to provide detailed reasons and/or evidence as to why the request for reconsideration was not found persuasive.  If an appeal had been filed, the examining attorney’s appeal brief would have put forth detailed arguments as to why petitioner’s arguments were unpersuasive.

 

To the extent petitioner is petitioning the Director to review the trademark examining attorney’s refusal of registration pursuant to Section 2(d), 15 U.S.C. §1052(e)(1), this is not proper subject matter for a petition to the Director. TMEP §1704. Questions of substance that arise during ex parte examination of an application, such as questions arising under Sections 2, 3, 4, 5, 6, and 23, may only be reviewed by the TTAB on appeal and not on petition to the Director. 15 U.S.C. §§1052-1056, 1091; 37 C.F.R. §2.146(b); TMEP §1704. If petitioner wished to preserve the right to argue against the Section 2(d) refusal if the request for reconsideration was not granted, petitioner should have filed a timely notice of appeal within six months of the issuance date of the final Office action. Petitioner did not do so.

 

For the foregoing reasons, it does not appear that clear error or abuse of discretion on the part of the examining attorney will be established, or that petitioner will be able to show it substantially complied with the outstanding requirements.

 

If you wish to pursue this petition, despite the fact that it will likely be denied, you are granted sixty days from the issue date of this letter to submit the following:

 

(1)   Petitioner’s attorney’s U.S. bar information.

 

If the USPTO does not receive the item identified above within the sixty-day period, the petition will be denied without consideration on the merits and the application will remain abandoned.  See TMEP §§1705.03, 1705.07.  Petitioner will not have met the requirements for filing a petition.  See TMEP §§1705.03, 1705.07. 

 

Sincerely,

 

/Allison P. Schrody/

Attorney Advisor

Office of the Deputy Commissioner

 for Trademark Examination Policy

allison.schrody@uspto.gov

(571) 272-5893

 

How to respond.  Use the Response to Petition to Director Inquiry Letter at http://www.gov.uspto.report/trademarks-application-process/filing-online/petition-forms to file a response to this letter.