To: | 9299-5000 Québec Inc. (trademark@collenip.com) |
Subject: | U.S. Trademark Application Serial No. 88152848 - HELIO - X919 |
Sent: | August 13, 2019 02:40:35 PM |
Sent As: | ecom127@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88152848
Mark: HELIO
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Correspondence Address: COLLEN IP, INTELLECTUAL PROPERTY LAW, P. |
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Applicant: 9299-5000 Québec Inc.
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Reference/Docket No. X919
Correspondence Email Address: |
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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) and/or Electronic System for Trademark Trials and Appeals (ESTTA). A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action.
Issue date: August 13, 2019
This Office action is in response to applicant’s communication filed on July 18, 2019.
In a previous Office action dated January 24, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following: Trademark Act Section 2(d) for a likelihood of confusion with a registered mark. In addition, applicant was required to satisfy the following requirements: Provide a Signed Declaration, Provide a True Copy of the Foreign Registration Certificate, and Provide a Translation of the Foreign Registration Certificate.
Based on applicant’s response, the trademark examining attorney notes that the following requirement has been satisfied: Provide a Signed Declaration. See TMEP §§713.02, 714.04.
The following refusal have also been obviated: Section 2(d) Refusal. See TMEP §§713.02, 714.04.
Further, the trademark examining attorney maintains and now makes FINAL the requirements in the summary of issues below. See 37 C.F.R. §2.63(b); TMEP §714.04.
SUMMARY OF ISSUES MADE FINAL that applicant must address:
TRUE COPY OF FOREIGN REGISTRATION REQUIRED
A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in the applicant’s country of origin. TMEP §1004.01. If an applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, the applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to the applicant’s country of origin. TMEP §1016.
Here, applicant provided what appears to be only part of a copy of the foreign registration. Specifically, the first page of the registration appears to be a first copy and the copy appears to be incomplete, as the first page contains both English and French, however, the rest of the submitted document only contains French and no corresponding English translation. Further, the second page appears to be a photocopy of the foreign registration and is thus not a true copy.
Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin.
TRANSLATION OF FOREIGN REGISTRATION REQUIRED
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.
How to respond. Click to file a response to this final Office action and/or appeal it to the Trademark Trial and Appeal Board (TTAB).
/Luke Cash Browning/
Luke Cash Browning
Trademark Examining Attorney
Law Office 127
(571) 270-5767
Luke.Browning@uspto.gov
RESPONSE GUIDANCE