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: 1/25/2019

 

 

 

INTRODUCTION

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issues below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

SUMMARY

 

• Section 2(d) Refusal – Likelihood of Confusion
• ADVISORY:  Prior-Filed Applications
• Sections 1 and 45 Specimen Refusal
• Identification of Services Amendment Required
• Explanation of Mark’s Significance Required
• Additional Processing Fee Required
• ADVISORY:  Response to Office Action
• ADVISORY:  Trademark Counsel

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 4582321.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registration.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the services of the parties.  See 15 U.S.C. §1052(d).  Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”).  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017).  Only those factors that are “relevant and of record” need be considered.  M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018). 

 

Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis:  (1) the similarities between the compared marks and (2) the relatedness of the compared services.  See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.

 

Comparison of Marks

 

Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression.  Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v).  “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.”  In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)); TMEP §1207.01(b).

 

The marks at issue are:

 

• Application – “LAIVLI”; and

 

• Registration – “LIVLY”.

 

The marks are essentially phonetic equivalents and thus sound similar.  Similarity in sound alone may be sufficient to support a finding that the marks are confusingly similar.  In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b)(iv). 

 

Further, because the marks are phonetic equivalents that are identical in sound, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective services.  Id.  Therefore, the marks are confusingly similar. 

 

Because the marks are not identical, it is noted that where the services of an applicant and registrant are identical or virtually identical, the degree of similarity between the marks required to support a finding that confusion is likely declines.  See Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(b).  Such is the case at hand, which is discussed below in detail.

 

Comparison of Services

 

The services are compared to determine whether they are similar, commercially related, or travel in the same trade channels.  See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).

 

Determining likelihood of confusion is based on the description of the services stated in the application and registration at issue, not on extrinsic evidence of actual use.  See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).  

 

The services at issue are:

 

• Application – On-line consignment services whereby goods are received on consignment in on-line retail stores featuring Stainless Steel therapy tools, Myofascial Release Tools for Chiropractors, Massage Therapists, Occupational Therapist, Physical Therapists and Physical Therapy, Instrument Assisted Soft Tissue Mobilization, Bian-stones Gua Sha Tool, Gua Sha Scraping Mass, Soft Tissue Therapy Instruments, herapeutic Tool for Skin Treatment, Antibacterial Ergonomic Instrument for Doctors and Medical Practitioners, Soft Tissue Massage Tools,; On-line retail consignment stores featuring Stainless Steel therapy tools, Myofascial Release Tools for Chiropractors, Massage Therapists, Occupational Therapist, Physical Therapists and Physical Therapy, Instrument Assisted Soft Tissue Mobilization, Bian-stones Gua Sha Tool, Gua Sha Scraping Mass, Soft Tissue Therapy Instruments, herapeutic Tool for Skin Treatment, Antibacterial Ergonomic Instrument for Doctors and Medical Practitioners, Soft Tissue Massage Tools,; On-line retail store services featuring a wide variety of consumer goods of others; On-line retail store services featuring Stainless Steel therapy tools, Myofascial Release Tools for Chiropractors, Massage Therapists, Occupational Therapist, Physical Therapists and Physical Therapy, Instrument Assisted Soft Tissue Mobilization, Bian-stones Gua Sha Tool, Gua Sha Scraping Mass, Soft Tissue Therapy Instruments, herapeutic Tool for Skin Treatment, Antibacterial Ergonomic Instrument for Doctors and Medical Practitioners, Soft Tissue Massage Tools,; On-line wholesale and retail store services featuring Stainless Steel therapy tools, Myofascial Release Tools for Chiropractors, Massage Therapists, Occupational Therapist, Physical Therapists and Physical Therapy, Instrument Assisted Soft Tissue Mobilization, Bian-stones Gua Sha Tool, Gua Sha Scraping Mass, Soft Tissue Therapy Instruments, herapeutic Tool for Skin Treatment, Antibacterial Ergonomic Instrument for Doctors and Medical Practitioners, Soft Tissue Massage Tools,; Online retail convenience store services featuring in-store order pickup; Online retail department store services featuring in-store order pickup; Online retail Stainless Steel therapy tools, Myofascial Release Tools for Chiropractors, Massage Therapists, Occupational Therapist, Physical Therapists and Physical Therapy, Instrument Assisted Soft Tissue Mobilization, Bian-stones Gua Sha Tool, Gua Sha Scraping Mass, Soft Tissue Therapy Instruments, herapeutic Tool for Skin Treatment, Antibacterial Ergonomic Instrument for Doctors and Medical Practitioners, Soft Tissue Massage Tools,; store services featuring in-store order pickup; Retail shops featuring Stainless Steel therapy tools, Myofascial Release Tools for Chiropractors, Massage Therapists, Occupational Therapist, Physical Therapists and Physical Therapy, Instrument Assisted Soft Tissue Mobilization, Bian-stones Gua Sha Tool, Gua Sha Scraping Mass, Soft Tissue Therapy Instruments, herapeutic Tool for Skin Treatment, Antibacterial Ergonomic Instrument for Doctors and Medical Practitioners, Soft Tissue Massage Tools,; Retail Stainless Steel therapy tools, Myofascial Release Tools for Chiropractors, Massage Therapists, Occupational Therapist, Physical Therapists and Physical Therapy, Instrument Assisted Soft Tissue Mobilization, Bian-stones Gua Sha Tool, Gua Sha Scraping Mass, Soft Tissue Therapy Instruments, herapeutic Tool for Skin Treatment, Antibacterial Ergonomic Instrument for Doctors and Medical Practitioners, Soft Tissue Massage Tools,; stores; and

 

• Registration – Wholesale, retail, online wholesale, online retail, and mail order services featuring clothing, footwear, headwear, textile goods and toys.

 

In this case, the application uses broad wording to describe “stores,” which presumably encompasses all services of the type described, including registrant’s more narrowly identified mail order services.  See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015).  Additionally, the applicant’s consignment, retail, and wholesale services which feature broadly identified and/or indefinitely identified goods encompass and/or overlap the services identified in the registration.  Thus, applicant’s and registrant’s services are legally identical.  See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).

 

Additionally, the services of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.”  In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)).  Thus, applicant’s and registrant’s services are related.

 

Summary of Section 2(d) Refusal

 

In total: the parties’ marks are similar because they are phonetic equivalents likely to engender the same commercial impression; the parties’ services are commercially related because they are legally identical; and the parties’ services are available in the same trade channels because neither party has restricted its channels of trade.  Thus, consumers encountering the marks are likely to confuse them and mistake the underlying sources of the services.  Accordingly, registration must be refused under Section 2(d) of the Trademark Act.

 

Applicant must also note the following additional grounds for potential refusal.

 

ADVISORY:  PRIOR-FILED APPLICATIONS

 

The filing dates of pending U.S. Application Serial Nos. 87854459 and 88019648 precede applicant’s filing date.  See attached referenced applications.  If one or more of the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s).  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced applications.

 

In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the marks in the referenced applications.  Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.

 

Applicant must, however, respond to the following refusal.

 

SECTIONS 1 AND 45 SPECIMEN REFUSAL

 

Registration is refused because the specimen does not show the applied-for mark in use in commerce in connection with any of the services specified in International Class 35 in the application.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); In re Keep A Breast Found., 123 USPQ2d 1869, 1876-79 (TTAB 2017); In re Graystone Consulting Assocs., Inc., 115 USPQ2d 2035, 2037-38 (TTAB 2015); TMEP §§904, 904.07(a), 1301.04(d), (g)(i).  Specifically, the applicant shows use of the mark in association with good being sold via a third party’s online retail store services rather than using the mark in association with the services identified in the application.

 

An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of services identified in the application or amendment to allege use.  15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a). 

 

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).  Specimens comprising advertising and promotional materials must show a direct association between the mark and the services.  TMEP §1301.04(f)(ii).

 

Applicant may respond to this refusal by satisfying one of the following for each applicable international class:

 

(1)       Submit a different specimen (a verified “substitute” specimen) that (a) was 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 and (b) shows the mark in actual use in commerce for the services identified in the application or amendment to allege use.  A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20:  “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.”  The substitute specimen cannot be accepted without this statement.

 

(2)       Amend the filing basis to intent to use under Section 1(b), for which no specimen is required.  This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.

 

For an overview of both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/specimen.jsp.

 

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

 

IDENTIFICATION OF SERVICES AMENDMENT REQUIRED

 

The wording “Stainless Steel therapy tools, Myofascial Release Tools for Chiropractors, Massage Therapists, Occupational Therapist, Physical Therapists and Physical Therapy, Instrument Assisted Soft Tissue Mobilization, Bian-stones Gua Sha Tool, Gua Sha Scraping Mass, Soft Tissue Therapy Instruments, herapeutic Tool for Skin Treatment, Antibacterial Ergonomic Instrument for Doctors and Medical Practitioners, Soft Tissue Massage Tools” used multiple times in the identification of services is indefinite and must be clarified because it is unclear which parts of this wording specify goods featured in applicant’s services and which parts identify fields of use and/or intended users of the goods featured in applicant’s services.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend this wording to specify the common commercial or generic name of the services.  See TMEP §1402.01.  If the services have no common commercial or generic name, applicant must describe or explain the nature of the services using clear and succinct language.  See id.

 

The wording “herapeutic” used multiple times in the identification of services appears to be misspelled and is thus indefinite; the spelling must be corrected or the wording further clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01(a).  Applicant may substitute the following wording for the incorrect spelling, if accurate:  “therapeutic.”

 

Applicant must correct the punctuation in the identification to clarify the individual items in the list of services.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01(a).  Proper punctuation in identifications is necessary to delineate explicitly each product or service within a list and to avoid ambiguity.  Commas, semicolons, and apostrophes are the only punctuation that should be used in an identification of services.  TMEP §1402.01(a).  An applicant should not use colons, periods, exclamation points, and question marks in an identification.  Id.  In addition, applicants should not use symbols in the identification such as asterisks (*), at symbols (@), or carets.  Id.

 

In general, commas should be used in an identification (1) to separate a series of related items identified within a particular category of goods or services, (2) before and after “namely,” and (3) between each item in a list of goods or services following “namely” (e.g., personal care products, namely, body lotion, bar soap, shampoo).  Id.  Semicolons generally should be used to separate a series of distinct categories of goods or services within an international class (e.g., personal care products, namely, body lotion; deodorizers for pets; glass cleaners).  Id. 

 

The activities identified as “online retail stainless steel therapy tools,” “store services,” “stores,” and “retail stainless steel therapy” in International Class 35 are indefinite and must be clarified because retail services could include a wide array of retail support services – from accounting to advertising and marketing services.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.11. 

 

If applicant’s retail services involve retail stores or outlets (online or brick-and-mortar), or distributorships, applicant should amend the identification to specify the nature of the retail activity provided (e.g., retail stores, retail distributorships, online retail outlets), and (2) the field or type of goods offered through those retail services, e.g., “retail online ordering services featuring chiropractic, massage, physical therapy, and medical supplies,” “retail distributorships in the field of chiropractic, massage, physical therapy, and medical supplies,” and “retail outlets featuring chiropractic, massage, physical therapy, and medical supplies.”  See TMEP §§1301.01(a)(ii), 1402.11. 

 

Applicant may substitute the following wording, if accurate (bolded text indicating suggested changes):

 

In Class 35, On-line consignment services whereby goods are received on consignment in on-line retail stores featuring  Stainless Steel therapy tools and Myofascial Release Tools for Chiropractors, Massage Therapists, Occupational Therapist, and Physical Therapists for use in the fields of Physical Therapy and Instrument Assisted Soft Tissue Mobilization, Bian-stones Gua Sha Tool in the nature of a massage apparatus for use in the field of Gua Sha Scraping Mass, Soft Tissue Therapy Instruments, therapeutic Tool for Skin Treatment, and Antibacterial Ergonomic Instrument for Doctors and Medical Practitioners, and Soft Tissue Massage Tools; On-line retail consignment stores featuring Stainless Steel therapy tools and Myofascial Release Tools for Chiropractors, Massage Therapists, Occupational Therapist, and Physical Therapists for use in the fields of Physical Therapy and Instrument Assisted Soft Tissue Mobilization, Bian-stones Gua Sha Tool in the nature of a massage apparatus for use in the field of Gua Sha Scraping Mass, Soft Tissue Therapy Instruments, therapeutic Tool for Skin Treatment, and Antibacterial Ergonomic Instrument for Doctors and Medical Practitioners, and Soft Tissue Massage Tools; On-line retail store services featuring a wide variety of consumer goods of others; On-line retail store services featuring Stainless Steel therapy tools and Myofascial Release Tools for Chiropractors, Massage Therapists, Occupational Therapist, and Physical Therapists for use in the fields of Physical Therapy and Instrument Assisted Soft Tissue Mobilization, Bian-stones Gua Sha Tool in the nature of a massage apparatus for use in the field of Gua Sha Scraping Mass, Soft Tissue Therapy Instruments, therapeutic Tool for Skin Treatment, and Antibacterial Ergonomic Instrument for Doctors and Medical Practitioners, and Soft Tissue Massage Tools; On-line wholesale and retail store services featuring Stainless Steel therapy tools and Myofascial Release Tools for Chiropractors, Massage Therapists, Occupational Therapist, and Physical Therapists for use in the fields of Physical Therapy and Instrument Assisted Soft Tissue Mobilization, Bian-stones Gua Sha Tool in the nature of a massage apparatus for use in the field of Gua Sha Scraping Mass, Soft Tissue Therapy Instruments, therapeutic Tool for Skin Treatment, and Antibacterial Ergonomic Instrument for Doctors and Medical Practitioners, and Soft Tissue Massage Tools; Online retail convenience store services featuring chiropractic, massage, physical therapy, and medical supplies and in-store order pickup; Online retail department store services featuring in-store order pickup; Retail on-line ordering services featuring Stainless Steel therapy tools and Myofascial Release Tools for Chiropractors, Massage Therapists, Occupational Therapist, and Physical Therapists for use in the fields of Physical Therapy and Instrument Assisted Soft Tissue Mobilization, Bian-stones Gua Sha Tool in the nature of a massage apparatus for use in the field of Gua Sha Scraping Mass, Soft Tissue Therapy Instruments, therapeutic Tool for Skin Treatment, and Antibacterial Ergonomic Instrument for Doctors and Medical Practitioners, and Soft Tissue Massage Tools; On-line retail store services featuring chiropractic, massage, physical therapy, and medical supplies and in-store order pickup; Retail shops featuring Stainless Steel therapy tools and Myofascial Release Tools for Chiropractors, Massage Therapists, Occupational Therapist, and Physical Therapists for use in the fields of Physical Therapy and Instrument Assisted Soft Tissue Mobilization, Bian-stones Gua Sha Tool in the nature of a massage apparatus for use in the field of Gua Sha Scraping Mass, Soft Tissue Therapy Instruments, therapeutic Tool for Skin Treatment, and Antibacterial Ergonomic Instrument for Doctors and Medical Practitioners, and Soft Tissue Massage Tools; Retail distributorships in the field of Stainless Steel therapy tools and Myofascial Release Tools for Chiropractors, Massage Therapists, Occupational Therapist, and Physical Therapists for use in the fields of Physical Therapy and Instrument Assisted Soft Tissue Mobilization, Bian-stones Gua Sha Tool in the nature of a massage apparatus for use in the field of Gua Sha Scraping Mass, Soft Tissue Therapy Instruments, therapeutic Tool for Skin Treatment, and Antibacterial Ergonomic Instrument for Doctors and Medical Practitioners, and Soft Tissue Massage Tools; Wholesale and retail store services featuring chiropractic, massage, physical therapy, and medical supplies

 

Applicant may amend the identification to clarify or limit the services, but not to broaden or expand the 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 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.

 

Applicant must also respond to the following requirement.

 

EXPLANATION OF MARK’S SIGNIFICANCE REQUIRED

 

To permit proper examination of the application, applicant must provide the following information:

 

(1)  Explain whether the wording in the mark “LAIVLI” has any meaning or significance in the industry in which the services are manufactured/provided, any meaning or significance as applied to applicant’s services, or if such wording is a term of art within applicant’s industry. 

 

(2)  Explain whether this wording identifies a geographic place or has any meaning in a foreign language. 

 

(3)  Submit an English translation of all foreign wording in a mark.  If the wording does not have meaning in a foreign language, applicant should so specify.   

 

The format for an English translation and transliteration:  “The English translation of “LAIVLI” is “[applicant must provide appropriate translation, if applicable]”. 

 

The format for when there is no English translation or meaning of the transliteration:  “The wording “LAIVLI” has no meaning in a foreign language. 

 

See 37 C.F.R. §§2.32(a)(9)-(a)(10), 2.61(b); TMEP §§809-809.03, 814. 

 

Failure to comply with a request for information is grounds for refusing registration.  In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.

 

Applicant must also respond to the following requirement.

 

ADDITIONAL PROCESSING FEE REQUIRED

 

Applicant must submit an additional processing fee of $125 per class because the application as filed did not meet the TEAS Plus application filing requirements.  See 37 C.F.R. §§2.6(a)(1)(v), 2.22(a), (c); TMEP §§819.01 et seq., 819.04.  Specifically, applicant failed to meet the following application filing requirement:  the identification of services includes wording not taken from the USPTO’s U.S. Acceptable Identification of Goods and Services Manual. 

 

The additional fee is required even if applicant later corrects these application requirements.

 

Applicant must note the following advisory.

 

ADVISORY:  RESPONSE TO OFFICE ACTION

 

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.

 

Responses to Office actions must be properly signed.  See 37 C.F.R. §§2.62(b), 2.193(e)(2); TMEP §§712, 712.01.  If an applicant is not represented by an attorney, the response must be signed by the individual applicant or someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner).  See 37 C.F.R. §2.193(e)(2)(ii); TMEP §§611.03(b), 611.06(b)-(h), 712.01.  In the case of joint applicants, all must sign.  37 C.F.R. §2.193(e)(2)(ii); TMEP §611.06(a).  If an applicant is represented by an attorney authorized to practice before the USPTO, the attorney must sign the response.  37 C.F.R. §2.193(e)(2)(i); TMEP §§611.03(b), 712.01. 

 

Applicant must also note the following advisory.

 

ADVISORY:  TRADEMARK COUNSEL

 

Because of the legal technicalities and strict deadlines involved in the USPTO application process, applicant may wish to hire a qualified U.S. attorney specializing in trademark matters to represent applicant in this process and provide legal advice.  Although the undersigned trademark examining attorney is permitted to help an applicant understand the contents of an Office action as well as the application process in general, no USPTO attorney or staff is permitted to give an applicant legal advice or statements about an applicant’s legal rights.  TMEP §§705.02, 709.06. 

 

For attorney referral information, applicant may consult the American Bar Association’s Consumers’ Guide to Legal Help or an online directory of legal professionals, such as FindLaw®.  The USPTO, however, may not assist an applicant in the selection of a private attorney.  37 C.F.R. §2.11.

 

Please note that foreign attorneys, other than duly authorized Canadian attorneys, are not permitted to represent applicants before the USPTO.  See 37 C.F.R. §§2.17(e), 11.14(c), (e); TMEP §602.03-.03(c).  The only attorneys who may practice before the USPTO in trademark matters are (1) attorneys in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and other U.S. commonwealths/territories; and (2) duly authorized Canadian agents/attorneys.  See 37 C.F.R. §§2.17(e), 11.14(a), (c); TMEP §602.

 

CONCLUSION

 

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. 

 

 

 

 

/Joshua S. Toy/

Examining Attorney

Law Office 120

(571) 272-4856

joshua.toy@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.

 

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.  

 

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 1/25/2019 FOR U.S. APPLICATION SERIAL NO. 88154117

 

Your trademark application has been reviewed.  The trademark examining attorney assigned by the USPTO to your application has written an official letter to which you must respond.  Please follow these steps:

 

(1)  Read the LETTER by clicking on this link or going to http://tsdr.gov.uspto.report/, entering your U.S. application serial number, and clicking 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)  Respond within 6 months (or sooner if specified in the Office action), calculated from 1/25/2019, using the Trademark Electronic Application System (TEAS) response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  A response transmitted through TEAS must be received before midnight Eastern Time of the last day of the response period.

 

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. 

 

(3)  Questions about the contents of the Office action itself should be directed to the trademark examining attorney who reviewed your application, identified below. 

 

/Joshua S. Toy/

Examining Attorney

Law Office 120

(571) 272-4856

joshua.toy@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.