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: 12/11/2018

 

The referenced application and preliminary amendment (with the correspondence address change) have 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:

 

1. Requirement concerning the drawing, color claim, and mark description.
2. Requirement for clarification of the identification of goods/services.
3. Requirement for compliance with the multiple-classification requirements.

 

**Applicant is invited to call the examining attorney to attempt to quickly resolve these issues.

 

Search

 

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).

 

However, applicant must respond to the following refusal(s) and/or requirement(s).

 

1)  Drawing, Color Claim, and Mark Description

 

Applicant must clarify the colors that are being claimed as a feature of the mark.  See 37 C.F.R. §§2.37, 2.52(b)(1), 2.61(b); TMEP §§807.07(a) et seq.  The drawing shows the mark in the colors black, white and red (however, the white could simply be background areas not actually intended to be claimed as part of the mark).  On the other hand, the color claim references only red and white, and the description of the mark references only red.   Thus, clarification is required.

 

Where the color claim and/or description of the mark and drawing are inconsistent with one another, generally the USPTO looks to the drawing to determine what the mark is.  TMEP §807.07(a)(i)-(a)(ii), (c).  Additionally, the colors in the drawing, color claim, and description must match.  See 37 C.F.R. §2.52(b)(1); TMEP §§807.07 et seq. 

 

If the white in the mark is not actually intended to be claimed as a color feature of the mark, then applicant must exclude it from the color claim and include in the mark description a statement that the colors white represents background or transparent areas and is not part of the mark.  See TMEP §807.07(d).

 

However, please note that applicant must address the color black in the outline of the wording/designs in the mark.  An applicant must claim all colors actually shown in the mark; the applicant cannot claim color for some elements of the mark and not others.  See 37 C.F.R §2.52(b)(1); TMEP §§807.07(a)–807.07(a)(ii). 

 

For example, when the drawing includes black lettering/partial black lettering as well as elements in other colors, an applicant must claim the color black as a feature of the mark and include references to the black lettering/partial black lettering in the color location statement.  The applicant may not state that the black lettering/black portion of the lettering represents all colors, or that it represents the particular color of the label, product, packaging, advertisement, website, or other specimen on which the mark appears at any given time.  See TMEP §807.07(d).

 

In light of the foregoing, applicant may satisfy one of the following:

 

(1)       Submit a new color drawing that shows the mark in the colors specified either the color claim or description of the mark.  TMEP §807.07(c).  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.  In that case, the color claim and/or mark description also must be amended to be consistent with the amended drawing.

 

(2)       Submit an amended color claim and mark description that matches the colors in the drawing.  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 the white represents background and/or transparent areas and is not part of the mark, applicant must so specify in the description.  See TMEP §807.07(d). 

 

Assuming the white in the current drawing is only used as a background and not part of the mark, the following color claim and mark description are suggested:

 

Color claim:  The colors black and red are claimed as a feature of the mark.

 

Description:  The mark consists of two flame designs with the one on the left resembling the letter “L” and the one on the right resembling the letter “W.”  The curved lines forming the flames are red with black outlines.  The white in the drawing represents background areas only and is not part of the mark.

 

For more information about drawings and instructions on how to submit a new color drawing, amended color claim and/or description online using the Trademark Electronic Application System (TEAS) form, see the Drawing webpage.

 

2)  Identification of Goods/Services

 

The identification in Class 41 is acceptable.

 

However, some of the wording in the Class 25 identification of goods is indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant also must adopt the appropriate international classification number for the goods and/or services identified in the application.  The USPTO follows the International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Classification), established by the World Intellectual Property Organization, to classify goods and services.  See 37 C.F.R. §2.85(a); TMEP §§1401.02, 1401.02(a).

 

More specifically, “clothing, namely, face masks” is indefinite.  In this regard, many different types of face masks could be considered “clothing,” but they are properly classified in other classes.  For example, paper face masks and costume masks are properly classified in Class 28.  Masks for use by medical professionals are in Class 10.  Thus, clarification is required as to the nature of the face masks.

 

Applicant may substitute the following wording for Class 25, if accurate.

 

            Medical clothing, namely, face masks for use by medical personnel, in Class 10.

 

Clothing, namely, hoodies, t-shirts, sweat shirts, sweat pants, bandanas, and face masks in the nature of ___________ [specify type of masks, e.g., sleep masks, ski masks, knit face masks], in Class 25.

 

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.

 

3)  Multiple-classification 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 could be classified in at least four classes; however, applicant submitted a fee(s) sufficient for only two class(es).  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.

 

Advisory

 

IF RESPONDING IN WRITING PLEASE NOTE THE FOLLOWING:

 

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. 

 

As noted above, applicant is invited to call the undersigned to attempt to quickly resolve this matter.  Please also do not hesitate to contact the undersigned with any questions.

 

/MaureenDallLott/

 

Maureen Dall Lott

Trademark Examining Attorney, Law Office 105

United States Patent and Trademark Office

571-272-9714

maureen.lott@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 12/11/2018 FOR U.S. APPLICATION SERIAL NO. 88093414

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click 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)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 12/11/2018 (or sooner if specified in the Office action).  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.  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

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.  Instead, the USPTO recommends that you respond online using the TEAS response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@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.