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:  September 28, 2020

 

This Office action is supplemental to and supersedes the previous Office action issued on March 9, 2020 in connection with this application.  Based on information and/or documentation in applicant’s response, the trademark examining attorney now issues the following new requirement:  requirement to provide signed affidavit or declaration to support Section 2(f) claim.  See TMEP §§706, 711.02. 

 

PREVIOUS ACTION: In a previous Office action dated January 18, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following:  Trademark Act Section 2(e)1, finding the mark merely descriptive.  In addition, applicant was required to satisfy the following requirements:  amend the identification of services, specify filing basis and provide a signed declaration. 

 

Based on applicant’s July 18, 2019 response, the trademark examining attorney issued a New Non Final Office action dated August 9, 2019 in which applicant was required to provide attorney bar information.  Additionally, the Section 2(e)1 refusal and requirements to amend the identification of services, specify filing basis and provide a signed declaration were continued and maintained.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

Applicant filed a Response on February 5, 2020. 

 

Based on applicant’s February 5, 2020 Response, the trademark examining attorney previously noted that the following requirements have been satisfied:  requirements to specify filing basis, provide a signed declaration and provide attorney bar information. See TMEP §713.02. The requirement to amend the identification of services also has been satisfied.

 

Although applicant submitted a claim of acquired distinctiveness under Section 2(f), the trademark examining attorney previously found the claim insufficient to overcome the Trademark Act Section 2(e)1 refusal.  Thus, the trademark examining attorney issued a New Non Final Office action dated August 9, 2020 finding the mark generic.

 

Applicant filed a Response on September 8, 2020 offering arguments against the generic refusal.  The trademark examining attorney has carefully considered applicant’s arguments.  However, the Section 2(f) claim is not properly verified, and cannot be accepted to overcome the Section 2(e)1 refusal until applicant provides a properly signed affidavit to support the claim.  Accordingly, the trademark examining attorney now issues a New Non Final Office action for the reasons set forth below.

 

The following is a SUMMARY OF ISSUES that applicant must address:

 

            •  Requirement to Provide Signed Affidavit or Declaration to Support Section 2(f) Claim

 

Applicant must respond to all issues raised in this Office action within six (6) months of the date of issuance of this Office action.  37 C.F.R. §2.62(a); see TMEP §711.02.  If applicant does not respond within this time limit, the application will be abandoned.  37 C.F.R. §2.65(a).

 

REQUIREMENT TO PROVIDE SIGNED AFFIDAVIT OR DECLARATION TO SUPPORT SECTION 2(f) CLAIM

 

Applicant asserted a claim of acquired distinctiveness under Trademark Act Section 2(f) based on use of the mark in commerce with the goods and/or services for five years prior to the date on which the claim is made.  See 15 U.S.C. §1052(f).  However, the claim of five years of use is not supported by a properly signed affidavit or declaration.

 

To amend the application to Section 2(f) based on five years’ use, an applicant may request that the application be amended to assert a claim of acquired distinctiveness under Section 2(f) and submit the following written statement claiming acquired distinctiveness, if accurate:

 

The mark has become distinctive of the goods and/or services through the applicant’s substantially exclusive and continuous use of the mark in commerce that the U.S. Congress may lawfully regulate for at least the five years immediately before the date of this statement.

 

TMEP §1212.05(d); see 15 U.S.C. §1052(f); 37 C.F.R. §2.41(a)(2); TMEP §1212.08.  This statement must be verified with an affidavit or signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.41(a)(2); TMEP §1212.05(d); see 37 C.F.R. §2.193(e)(1).  The affidavit or declaration must be signed by a person properly authorized to sign on behalf of applicant under 37 C.F.R. §2.193(e)(1). See TMEP §611.03(a).

 

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.    

 

 

/Oreoluwa Alao/

Oreoluwa Alao

Examining Attorney

Law Office 108

(571) 270-7210

oreoluwa.alao@uspto.gov

 

 

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 September 28, 2020 for

U.S. Trademark Application Serial No. 88128687

 

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. 

 

 

/Oreoluwa Alao/

Oreoluwa Alao

Examining Attorney

Law Office 108

(571) 270-7210

oreoluwa.alao@uspto.gov

 

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 September 28, 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.”