To: | Whale Limited (trademarks@fbtlaw.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88196162 - WHALE - N/A |
Sent: | 2/26/2019 8:00:25 PM |
Sent As: | ECOM105@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88196162
MARK: WHALE
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Whale Limited
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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: 2/26/2019
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.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 5350333, 5525062, 5060421 and 4555481. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
The applied for mark is WHALE plus design for “Entertainment; Sporting and cultural activities; betting, gaming, gambling, lottery and casino services; online betting, gaming, gambling, lottery and casino services; betting exchange services; providing slot machine parlours, rental of slot machines; Conducting multiple player games of chance; hospitality services (entertainment); Publishing; online publishing; publishing and online publishing in relation to betting, gaming, gambling, lottery, casinos, hotels, restaurants, cafes, travel, holidaying, sports, homes and gardens, fashion, beauty treatments, art, science and technology, transportation, vehicles, hospitality, entertainment, philanthropy, general news and auctions, artefacts and rarities; information, advisory and consultancy services relating to all the aforesaid services” and “Services for providing food and drink; Temporary accommodation; hospitality; information, advisory and consultancy services relating to all the aforesaid services”. The registered marks are:
1) Registration No. 5350333, WHALE BONES for “Entertainment services in the nature of live visual and audio performances, namely, musical band, rock group, gymnastic, dance, and ballet performances”;
2) Registration No. 5525062, RED WHALE for “Cafe services; restaurant services; take-out restaurant services” in part;
3) Registration No. 506042, WHALE TALES, for “Publishing services, namely, publishing of books; digital video, audio, and multimedia publishing; electronic publishing services, namely, publication of text and graphic works of others on CD, DVD and online featuring fiction or educational instruction for childhood, early childhood and adult professional instruction in the field of educational topics of interest to children, parents, caregivers, and educators; online electronic publishing of books and periodicals; providing online non-downloadable electronic publications in the nature of fiction and non-fiction books on a variety of topics; providing online non-downloadable electronic publications in the nature of periodicals, journals, booklets and pamphlets in the fields of literature; publication of books, publication of electronic books and journals online; multimedia publishing of books and magazines”;
4) Registration No. 4555481, BLUE WHALE for “Entertainment services, namely, providing live musical entertainment and nightclub services”.
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 goods and/or 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 goods and/or 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.
Similarity of the 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).
In the present case, the applicants mark WHALE plus design is similar to the registrant’s marks in sound, appearance and connotation. All of the marks share the identical dominant feature which is the wording WHALE. Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). Greater weight is often given to this dominant feature when determining whether marks are confusingly similar. See In re Detroit Athletic Co., 903 F.3d at 1305, 128 USPQ2d at 1050 (citing In re Dixie Rests., 105 F.3d at 1407, 41 USPQ2d at 1533-34).
Therefore based on the above the marks are confusingly similar.
Relatedness of the Services
The goods and/or 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).
Registration No. 5350333 and 4555481
The applicant’s services of “Entertainment; Sporting and cultural activities; betting, gaming, gambling, lottery and casino services; online betting, gaming, gambling, lottery and casino services; betting exchange services; providing slot machine parlours, rental of slot machines; Conducting multiple player games of chance; hospitality services (entertainment); Publishing; online publishing; publishing and online publishing in relation to betting, gaming, gambling, lottery, casinos, hotels, restaurants, cafes, travel, holidaying, sports, homes and gardens, fashion, beauty treatments, art, science and technology, transportation, vehicles, hospitality, entertainment, philanthropy, general news and auctions, artefacts and rarities; information, advisory and consultancy services relating to all the aforesaid services” are similar to the registrant’s services of “Entertainment services, namely, providing live musical entertainment and nightclub services” and “Entertainment services in the nature of live visual and audio performances, namely, musical band, rock group, gymnastic, dance, and ballet performances” because the services all include entertainment services. In fact the applicants “entertainment services” encompass the registrant’s services.
In this case, the application uses broad wording to describe Entertainment and Sporting and cultural activities, which presumably encompasses all goods and/or services of the type described, including registrants’s more narrow “Entertainment services, namely, providing live musical entertainment and nightclub services” and “Entertainment services in the nature of live visual and audio performances, namely, musical band, rock group, gymnastic, dance, and ballet performances”. 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). 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 goods and/or 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 goods and/or services are related.
The attached Internet evidence, consisting of casinos and betting facilities that offer live entertainment, establishes that the same entity commonly provides the relevant services and markets the services under the same mark and the relevant services are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use. Thus, applicant’s and registrant’s services are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
1) Live Casino, http://www.livecasinohotel.com/locations/live-center-stage
2) Graton, http://www.gratonresortcasino.com/Live-Entertainment
3) Hollywood Casino, http://www.hollywoodcasinotoledo.com/entertainment
Registration No. 5525062
The applicant’s services of “Entertainment; Sporting and cultural activities; betting, gaming, gambling, lottery and casino services; online betting, gaming, gambling, lottery and casino services; betting exchange services; providing slot machine parlours, rental of slot machines; Conducting multiple player games of chance; hospitality services (entertainment); Publishing; online publishing; publishing and online publishing in relation to betting, gaming, gambling, lottery, casinos, hotels, restaurants, cafes, travel, holidaying, sports, homes and gardens, fashion, beauty treatments, art, science and technology, transportation, vehicles, hospitality, entertainment, philanthropy, general news and auctions, artefacts and rarities; information, advisory and consultancy services relating to all the aforesaid services” and “Services for providing food and drink; Temporary accommodation; hospitality; information, advisory and consultancy services relating to all the aforesaid services” are similar to the registrant’s services of “Cafe services; restaurant services; take-out restaurant services” because the services both include restaurant services. In fact the applicant’s services encompass the registrant’s services.
In this case, the application use(s) broad wording to describe “Services for providing food and drink”, which presumably encompasses all goods and/or services of the type described, including registrant’s more narrow Cafe services; restaurant services; take-out restaurant 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). 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 goods and/or 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 goods and/or services are related.
1) The Point, http://www.thepointcasinoandhotel.com/dining/
2) Aria, http://www.aria.com/en/restaurants/aria-cafe.html
3) Borgata, http://www.theborgata.com/dining/casual-dining/borgata-baking-company
Registration No. 5060421
The applicants services of “Publishing; online publishing; publishing and online publishing in relation to betting, gaming, gambling, lottery, casinos, hotels, restaurants, cafes, travel, holidaying, sports, homes and gardens, fashion, beauty treatments, art, science and technology, transportation, vehicles, hospitality, entertainment, philanthropy, general news and auctions, artefacts and rarities; information, advisory and consultancy services relating to all the aforesaid services” are related to the registrants services of “Publishing services, namely, publishing of books; digital video, audio, and multimedia publishing; electronic publishing services, namely, publication of text and graphic works of others on CD, DVD and online featuring fiction or educational instruction for childhood, early childhood and adult professional instruction in the field of educational topics of interest to children, parents, caregivers, and educators; online electronic publishing of books and periodicals; providing online non-downloadable electronic publications in the nature of fiction and non-fiction books on a variety of topics; providing online non-downloadable electronic publications in the nature of periodicals, journals, booklets and pamphlets in the fields of literature; publication of books, publication of electronic books and journals online; multimedia publishing of books and magazines” because the services both include publishing services. In fact the registrant’s services include the applicant’s services.
In this case, the registration use(s) broad wording to describe “Publishing services, namely, publishing of books; digital video, audio, and multimedia publishing”, which presumably encompasses all goods and/or services of the type described, including applicant’s more narrow “Publishing; online publishing; publishing and online publishing in relation to betting, gaming, gambling, lottery, casinos, hotels, restaurants, cafes, travel, holidaying, sports, homes and gardens, fashion, beauty treatments, art, science and technology, transportation, vehicles, hospitality, entertainment, philanthropy, general news and auctions, artefacts and rarities”. 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). 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 goods and/or 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 goods and/or services are related.
Conclusion
Since the marks are similar which creates the same commercial impression and the services are related, there is a likelihood of confusion as to the source of the applicant’s services. Therefore, the applicant’s mark is not entitled to registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.
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.
Upon receipt of applicant’s response resolving the following requirement(s), action on this application will be suspended pending the disposition of U.S. Application Serial No(s). 88151740, 88080879, 87472259 and 87132762. 37 C.F.R. §2.83(c); TMEP §§716.02(c), 1208.02(c).
Entertainment, namely, {specify the type of entertainment services, i.e. live performacnes by misucal bands}; Organizing community sporting and cultural activities; betting, gaming services in the nature of {specify, e.g., casino gambling, conducting online computer game tournaments, etc.}, gambling, lottery and casino services; online betting, online gaming services in the nature of {specify, e.g., casino gambling, conducting online computer game tournaments, etc.}, online gambling, online lottery and casino services; gambling services, namely, betting exchange services; providing slot machine parlours, rental of slot machines; Entertainment services, namely, Conducting multiple player games of chance; Entertainment hospitality services, namely, Entertainment services in the nature of production of television shows in the field of hospitality services; Publishing of {specify the type of material to be published. i.e. books, magazines}; online electronic publishing of {specify the type of material to be published. i.e. books, magazines}; publishing and online publishing of {specify the type of material to be published. i.e. books, magazines} in relation to betting, gaming, gambling, lottery, casinos, hotels, restaurants, cafes, travel, holidaying, sports, homes and gardens, fashion, beauty treatments, art, science and technology, transportation, vehicles, hospitality, entertainment, philanthropy, general news and auctions, artefacts and rarities; information, advisory and consultancy services relating to all the aforesaid services in International Class 041;
Services for providing food and drink; Providing temporary accommodation; Consulting services in the field of hospitality; information, advisory and consultancy services relating to all the aforesaid services in International Class 043.
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.
In this case, applicant must disclaim the wording “WHALE” because it is not inherently distinctive. These unregistrable term(s) at best are merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services. See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a).
The attached evidence from DocSports.com shows this wording is commonly used in connection with similar goods and/or services to mean “a very high profiled bettor that has a history of making very large bets”. Thus, the wording merely describes applicant’s goods and/or services because it describes a feature of the applicants casino, betting and gambling services.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “WHALE” for International Class 041 apart from the mark as shown.
TMEP §1213.08(a)(i); see In re Owatonna Tool Co., 231 USPQ 493, 494 (Comm’r Pats. 1983).
For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
FOREIGN REGISTRATION CERTIFICATE REQUIRED
The application specifies both an intent to use basis under Trademark Act Section 1(b) and a claim of priority under Section 44(d) based on a foreign application. See 15 U.S.C. §§1051(b), 1126(d); 37 C.F.R. §2.34(a)(2), (a)(4). However, no copy of a foreign registration has been provided even though the application indicates applicant’s intent to rely on Section 44(e) as an additional basis for registration. See 15 U.S.C. §1126(e).
An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin. 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016. In addition, an applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law. 15 U.S.C. §1126(b); TMEP §§1002.01, 1004.
Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available. TMEP §1003.04(a). A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin. TMEP §1004.01. If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin. TMEP §1016. In addition, applicant must also provide an English translation if the foreign registration is not written in English. 37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b). The translation should be signed by the translator. TMEP §1004.01(b).
If the foreign registration has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English translation, as appropriate), applicant should so inform the trademark examining attorney and request that the U.S. application be suspended until a copy of the foreign registration is available. TMEP §§716.02(b), 1003.04(b).
If applicant cannot satisfy the requirements of a Section 44(e) basis, applicant may request that the mark be approved for publication based solely on the Section 1(b) basis. See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.35(b)(1); TMEP §§806.02(f), 806.04(b), 1003.04(b). Although the mark may be approved for publication on the Section 1(b) basis, it will not register until an acceptable allegation of use has been filed. See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103. Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration. See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.04(b).
Alternatively, applicant has the option to amend the application to rely solely on the Section 44(e) basis and request deletion of the Section 1(b) basis. See 37 C.F.R. §2.35(b)(1); TMEP §806.04. The foreign registration alone may serve as the basis for obtaining a U.S. registration. See 37 C.F.R. §2.34(a)(3); TMEP §806.01(d).
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.
/Lakeisha S. Munn Lewis/
Trademark Examining Attorney
Law Office 105
571-272-1910
lakeisha.lewis@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.