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: 12/28/2018

 

 

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.

 

SEARCH OF OFFICE’S DATABASE OF MARKS

 

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).

 

SUMMARY OF ISSUES:

• Mark Differs on Drawing and Foreign Application
• Identification of Goods

·        Multiple-Class Application Requirements

·        Color Claim in U.S. Application but No Color Claim in Foreign Registration

• Amended Description of Mark Required

 

MARK DIFFERS ON DRAWING AND FOREIGN APPLICATION

 

The USPTO cannot accept applicant’s drawing of the mark in the U.S. application because it does not match the mark in the foreign registration; that is, the mark in the drawing is not a “substantially exact representation of the mark” in the foreign registration.  See 37 C.F.R. §2.51(c); TMEP §§807.12(b), 1011.01.  Only slight, inconsequential variations are permitted between the mark in the U.S. application and the mark in the foreign registration.  In re Hacot-Colombier, 105 F.3d 616, 619, 41 USPQ2d 1523, 1525 (Fed. Cir. 1997); In re Larios S.A., 35 USPQ2d 1214, 1216-17 (TTAB 1995); TMEP §1011.01. 

 

In this case, the U.S. drawing displays the mark as having the colors violet, magenta, cyan, purple, white, and light pink. However, the foreign registration displays the mark as having the colors violet, magenta, cyan, purple, dark purple, white, light pink, light purple, and blue, and has different patterning.  The mark in the U.S. drawing does not match the mark on the foreign registration because the colors and patterning are different between U.S. drawing and the foreign registration. 

 

Applicant may respond by satisfying one of the following:

 

(1)            Submit a new drawing of the mark that matches the foreign registration and an amendment of the description that agrees with the new drawing.  See 37 C.F.R. §§2.37, 2.72(c); TMEP §§807.12(b), 1011.03.  The following amended description is suggested, if accurate:  “The mark consists of a stylized representation of a sitting camel, wherein at the top of the head is a magenta triangle with light pink triangles on both sides of it, the rest of the top of the head is purple, the outside of the ears are blue with the inside of the ears being violet and purple, the cheeks are violet, the nose is purple, the nostrils are white, the mouth is light pink, and the inside of the mouth is purple; and wherein the eyelashes are magenta, the upper eyelids are cyan, and the eyes are white with purple pupils with an inner white circle; and wherein the neck is purple, vertical bands of violet, light pink, blue, and magenta in the middle of the neck, and horizontal bands of cyan, dark purple, and purple below the horizontal bands, and a blue curved triangle above the right front shoulder; and wherein the front of the body has a magenta square wave interlocking with dark purple squares, horizontal bands of cyan, blue, and dark purple next the squares, and a purple curved polygon next to the bands; and wherein the two humps are in violet with light pink bands with purple dots; and wherein the area below the humps has vertical bands of violet, light purple, and blue, rectangles of alternating magenta, cyan, magenta, purple, and magenta from top to bottom, a purple curved horizontal band below the back hump connected to a dark purple vertical band, rectangles underneath the purple curved horizontal band in cyan, blue, and light pink from left to right, below the cyan square is a blue rectangle, a magenta triangle, and a blue trapezoid, all bordered by two white vertical lines connected at the bottom by a horizontal white line; and wherein the back area of the body is light purple and the tail is dark purple; and wherein the upper area of the left front is blue, the lower area of the left front leg is magenta, the shoulder of the right front leg is formed by triangles of light pink, violet, and cyan, the upper area of the right front leg is purple, the lower area of the right front leg and a blue curved band around a magenta semicircle and a magenta square wave interlocking with a light pink square wave, and the right front foot is purple with a blue sole; and wherein the left back leg is magenta, the shoulder of the right back leg is magenta, the upper area of the right back leg is light pink, the lower area of the right back leg is purple and magenta, and the right back foot is purple.” Applicant may amend the mark in the drawing to match the mark in the foreign registration but may not make any other changes or amendments that would materially alter the drawing of the mark.  See 37 C.F.R. §2.72(c); TMEP §§807.14 et seq., 1011.03.  The examining attorney notes that applicant must comply with the requirements set forth in the Color Claim in U.S. Application but No Color Claim in Foreign Registration section below.

 

(2)       Submit a request to amend the filing basis to Trademark Act Section 1(a) or 1(b), if applicant can satisfy the requirements for the chosen basis.  See 15 U.S.C. §1051(a)-(b); 37 C.F.R. §2.35(b)(1); TMEP §806.03.  A Section 1 basis does not require applicant to submit a foreign registration but requires evidence of applicant’s mark in use in commerce.  See 15 U.S.C. §1051(a)-(b); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a), 2.76(b)(2), 2.88(b)(2); TMEP §904.

 

For more information about drawings, amending the basis, and instructions on how to satisfy these response options online using the Trademark Electronic Application System (TEAS) response form, see the Drawing webpage.

 

IDENTIFICATION OF GOODS

 

Applicant has classified “Stroke counters for golf” in International Class 28; however, the proper classification is International Class 9. Additionally, the wording is indefinite and must be clarified because it is unclear what the goods are.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may respond by (1) adding International Class 9 to the application and reclassifying these goods and/or services in the proper international class with definite language, (2) deleting “Stroke counters for golf” from the application, or (3) deleting the remainder of the items in the identification and reclassifying the specified goods and/or services in the proper international class with definite language.  See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq.  If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.

 

Applicant may substitute the following wording, if accurate. Suggested additions and changes are in bold underline: 

 

Class 9:           Stroke counting devices, namely, counters for use during golf

 

Class 25:         Golf shoes; Golf trousers; Golfwear, namely, pants, shirts, skirts, jumpers and vests; Sportswear, namely, sport shirts, sport coats, sport overcoats and sports jackets; Wind vests; Wind resistant jackets; Winter clothes, namely, jackets, heavy jackets, down jackets, outer jackets, ski jackets, hats and gloves as clothing; Mufflers as neck scarves; Ear muffs; Socks; Golf caps; Baseball caps

 

Class 28:         Golf bags, with or without wheels; Golf balls; Golf divot repair tools; Stroke counters for golf; Golf gloves; Golf clubs; Golf club grips; Golf club shafts; Golf club heads; Fitted head covers for golf clubs; Golf club bags; Covers for golf clubs; Golf tees; Putting practice mats

 

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.

 

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 44:

 

(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 three 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 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class.  See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a).  See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.

 

COLOR CLAIM IN U.S. APPLICATION BUT NO COLOR CLAIM IN FOREIGN REGISTRATION

 

Applicant must clarify whether color is a feature of the mark in the foreign registration.  See 37 C.F.R. §§2.37, 2.52(b)(1), 2.61(b); TMEP §807.07(a)-(a)(ii), (d)(ii).  The foreign registration and the drawing in the U.S. application show the same mark in the same colors; however, only the U.S. application explicitly states that color is a feature of the mark.  Because 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; any color claims in the U.S. application and foreign registration must match.  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(b), 1011.01; see United Rum Merchs. Ltd. v. Distillers Corp. (S.A.), 9 USPQ2d 1481 (TTAB 1988). 

 

To clarify whether color is claimed as a feature of the mark in the foreign registration, applicant may satisfy one of the following:

 

(1)       If the mark in the foreign registration is intended to be in color and includes a color claim or the legal equivalent, applicant must provide a statement that the foreign registration includes a color claim or the legal equivalent.  See TMEP §§807.07(d)(ii), 1011.01.

 

The following format for the statement is suggested:  The foreign registration includes a color claim or the legal equivalent for the colors violet, magenta, cyan, purple, white, and light pink. 

 

The examining attorney notes that the colors in the drawing in the U.S. application must match the foreign registration, as stated in the Mark Differs on Drawing and Foreign Application section above.

 

(2)       If the mark in the foreign registration is not intended to be in color, applicant must provide a (a) new drawing for the U.S. application showing the mark only in black and white, and (b) statement that although the mark is registered in its country of origin featuring a color depiction of the mark, no claim of color is made in the foreign registration, and (c) description of the literal and design elements in the mark omitting any reference to color, for the U.S. application.  TMEP §§807.07(b), 1011.01; see TMEP §§808 et seq.  Additionally, although applicant may amend the drawing to delete color from the mark, any other amendments to the drawing will not be accepted if they would materially alter the mark.  37 C.F.R. §2.72(c)(2); TMEP §§807.14, 1011.01.

 

AMENDED DESCRIPTION OF MARK REQUIRED

 

Applicant must provide an amended description of the mark that includes all the literal and design elements and colors shown in the mark.  Specifically, the following elements and colors have been omitted:  where the colors appear in the mark, and the colors light green and dark green.

 

A complete description must identify all the literal and design elements in the mark and specify where the colors appear in those elements.  See 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §§807.07(a) et seq. 

 

The following description is suggested, if accurate:

 

The color(s) violet, magenta, cyan, purple, white, and light pink is/are claimed as a feature of the mark.

 

The mark consists of a stylized representation of a sitting camel, wherein at the top of the head is a cyan semicircle with a magenta curved line below it, the rest of the top of the head is purple, the outside of the ears are light pink with the inside of the ears being violet and purple, the cheeks are violet, the nose is purple, the nostrils are white, the mouth is light pink, and the inside of the mouth is purple; and wherein the eyelashes are magenta, the upper eyelids are cyan, and the eyes are white with purple pupils; and wherein the neck is substantially purple, with the front of the neck in violet; and wherein the front of the body has bands of magenta, light pink, cyan, and magenta from top to bottom, a curved band of violet next to the bands, the two humps are in purple, the area below the front hump is cyan and the area below the right hump is violet, the middle of the body is magenta, a purple band in the upper back of the body is purple with an area of violet and an area of cyan below the band, a band in the lower back of the body is light pink, and the tail is cyan; and wherein the upper area of the left front is light pink, the lower area of the left front leg is magenta, the shoulder of the right front leg is light pink, the upper area of the right front leg is cyan and purple, the lower area of the right front leg is magenta and light pink, and the right front foot is purple; and wherein the left back leg is magenta, the shoulder of the right back leg is magenta, the upper area of the right back leg is light pink, the lower area of the right back leg is purple and magenta, and the right back foot is purple.

 

RESPONSE GUIDELINES

 

For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  For a requirement, applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

 

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.  

 

 

 

/Derek van den Abeelen/

Examining Attorney

Law Office 126

(571) 270-3997

derek.vandenabeelen@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 12/28/2018 FOR U.S. APPLICATION SERIAL NO. 88127247

 

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 12/28/2018 (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.