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: 12/20/2018

 

 

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:

• Specimen Refused – Mark Differs on Drawing and Specimen
• Color Claim & Mark Description Requirements

 

SPECIMEN REFUSED – MARK DIFFERS ON DRAWING AND SPECIMEN

 

Registration is refused because the specimen does not show the mark in the drawing in use in commerce in International Class 42, which is required in the application or amendment to allege use.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a), 1301.04(g)(i).  The mark appearing on the specimen and in the drawing must match; that is, the mark in the drawing “must be a substantially exact representation of the mark” on the specimen.  See 37 C.F.R. §2.51(a)-(b); TMEP §807.12(a).

 

In this case, the specimen displays the mark as having a dark blue background.  However, the drawing displays the mark as having a black background.  The mark on the specimen does not match the mark in the drawing because the mark description does not state whether black is actually a part of the mark, as described in the Color Claim & Mark Description Requirements below. Therefore, black may be interpreted as a part of the mark, which does not match the dark blue as shown in the specimen.  Applicant has thus failed to provide the required evidence of use of the mark in commerce.  See TMEP §807.12(a).

 

Applicant may respond to this refusal by satisfying one of the following:

 

(1)       Submit a new color drawing of the mark that shows the mark on the specimen and an amendment of the description and color claim that agrees with the new drawing.  See 37 C.F.R. §2.72(b).  Applicant may amend the mark in the drawing to match the mark on the specimen 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(a)-(b); TMEP §807.14.  The following color claim and description are suggested, if accurate:

 

Color claim:  “The colors white, red, and dark blue are claimed as a feature of the mark.”

 

Description:  “The mark consists of a dark blue background and an outer upside-down drop design formed by four curved lines in white and a bottom portion forming a check mark in red, with an inner solid line upside-down drop in white inside the outer drop, a circle in white inside the inner drop, and a dark blue circle inside the white circle, all appearing above the word SUNSCREEN in white.”

 

(2)       Submit a new black-and-white drawing of the mark and an amendment deleting any color claim and modifying the description to delete any references to color.  The following description is suggested, if accurate:  “The mark consists of an outer upside-down drop design formed by four curved lines and a bottom portion forming a check mark, with an inner solid line upside-down drop inside the outer drop, and a circle inside the inner drop, all appearing above the word SUNSCREEN.”  Applicant may amend the mark in the drawing to delete color but may not make any other changes or amendments that would materially alter the mark on the drawing.  See 37 C.F.R. §2.72(a)-(b); TMEP §807.14.

 

(3)       Submit a different specimen (a verified “substitute” specimen) for each applicable international class that (a) shows the mark in the drawing in actual use in commerce in the colors depicted on the drawing and for the services in the application or amendment to allege use, and (b) in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use.

 

Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and webpages that show the mark used in the actual sale, rendering, or advertising of the services.  See TMEP §1301.04(a), (h)(iv)(C).

 

Applicant is advised that if a new specimen is submitted, applicant must still comply with the Color Claim & Mark Description Requirements below.

 

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

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.  However, if applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.

 

COLOR CLAIM & MARK DESCRIPTION REQUIREMENTS

 

The drawing shows the applied-for mark in various colors, including black, white and/or gray; however, the color claim and description of the mark do not reference the color black.  The color claim and description must be complete and reference all the colors in the mark.  See 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §§807.07(a) et seq.  Therefore, applicant must clarify whether black is used as color in the mark or to indicate background, outlining, shading, and/or transparent areas.  TMEP §807.07(d); see 37 C.F.R. §2.61(b).

 

Additionally, applicant must provide an amended description of the mark that includes all the literal and design elements shown in the mark.  Specifically, the following elements have been omitted:  the outer upside-down drop design, the inner solid-line drop design, and the inner circle.

 

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. 

 

To clarify how black is being used in the mark, applicant may satisfy one of the following:

 

(1)       If black is a feature of the mark, applicant must amend the color claim to include them and amend the description to identify where black appears in the literal and/or design elements of the mark.  The following color claim and description are suggested, if accurate:

 

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

 

Description:  “The mark consists of a black background and an outer upside-down drop design formed by four curved lines in white and a bottom portion forming a check mark in red, with an inner solid line upside-down drop in white inside the outer drop, a circle in white inside the inner drop, and a black circle inside the white circle, all appearing above the word SUNSCREEN in white.”

 

(2)       If black is not a feature of the mark, applicant must amend the description to state that black, white, and/or gray represent background, outlining, shading and/or transparent areas and are not part of the mark.  The following description is suggested, if accurate:

 

“The mark consists of an outer upside-down drop design formed by four curved lines in white and a bottom portion forming a check mark in red, with an inner solid line upside-down drop in white inside the outer drop, and a circle in white inside the inner drop, all appearing above the word SUNSCREEN in white.  The color(s) black represent background, outlining, shading, and/or transparent area and is/are not part of the mark.”

 

TMEP §807.07(d).

 

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 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.