Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

NONFINAL OFFICE ACTION

 

The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned.  Respond using the Trademark Electronic Application System (TEAS).  A link to the appropriate TEAS response form appears at the end of this Office action. 

 

 

Issue date:  July 31, 2020

 

 

The statement of use 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.

 

 

FAILURE TO FUNCTION – FEATURE OF THE GOODS

 

Registration is refused because the applied-for mark, as used on the specimen of record, serves only to identify the source of a feature, finish or treatment, rather than the source of the completed article of apparel.  Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051-1052, 1127; see TMEP §§1202, 1402.05(a). 

 

Indeed, the specimen indicates that the brands associated with the complete article of footwear is Timberland or in this very shoe specific case, “garrison” shoe. The applied-for mark “TIMBERGRIP” appears on the specimen and the attached evidence from applicant’s own website as a feature of the outsole treatment of the footwear rather than the source of the finished footwear. See specimens and attached applicant’s website at: http://www.timberland.com.sg/product_footwear_feature/timbergrip/ and http://www.timberland.com/shop/mens-garrison-trail-waterproof-mid-hiking-boots-a23dv210. Indeed, applicant describes the “TIMBERGRIP” as a feature of the shoes being “traction” technology as part of the shoes. See id.

 

This refusal will be withdrawn if applicant adopts the following identification of goods: 

 

Class 025: outer shoe sole finish sold as an integral component of finished footwear

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

 

 

RESPONSE GUIDELINES

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06. 

 

The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

How to respond.  Click to file a response to this nonfinal Office action.    

 

 

/Courtney M. Caliendo/

Courtney M. Caliendo

Trademark Examining Attorney

Law Office 121 - USPTO

Courtney.Caliendo@uspto.gov

571-270-1871

 

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on July 31, 2020 for

U.S. Trademark Application Serial No. 88031358

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Courtney M. Caliendo/

Courtney M. Caliendo

Trademark Examining Attorney

Law Office 121 - USPTO

Courtney.Caliendo@uspto.gov

571-270-1871

 

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from July 31, 2020, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”