UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

EXAMINER’S AMENDMENT/PRIORITY 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: 3/12/2019

 

 

PRIORITY ACTION

 

 

ISSUES APPLICANT MUST ADDRESS:  On March 11, 2019, the trademark examining attorney and Laura Goldbard George discussed the issues below.  Applicant must timely respond to these issues.  See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §§708, 711.

 

I.         SEARCH OF THE OFFICE RECORDS

 

Application Refused--Section 2(d) Refusal—Likelihood of Confusion

The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d) because the applicant’s applied-for mark when used on or in connection with the identified goods and/or services so resembles the marks in U.S. Registration Nos. 5155479, 5155463, 4675828 and 4875153 as to be likely to cause confusion, to cause mistake, or deceive. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  Please see the enclosed registrations.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a consumer would be confused, mistaken, or deceived as to the source of the goods and/or services of the applicant and registrant(s).  See 15 U.S.C. §1052(d).  Determining likelihood of confusion is made 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).  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017).  However, “[n]ot all of the [du Pont] factors are relevant to every case, and only factors of significance to the particular mark need be considered.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1366, 101 USPQ2d 1713, 1719 (Fed. Cir. 2012) (quoting In re Mighty Leaf Tea, 601. F.3d 1342, 1346, 94 USPQ2d 1257, 1259 (Fed. Cir 2010)).  Furthermore, the relevant du Pont factors are not necessarily “of equal weight in a given case, and any one of the factors may control a particular case.” Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F3d 1344, 1355, 98 USPQ2d 1253, 1260 (Fed. Cir. 2011) (quoting In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003).

 

The USPTO may focus its analysis “on dispositive factors, such as similarity of the marks and relatedness of the goods [and/or services].”  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)); see TMEP §1207.01.  In this case, the examining attorney finds the following du Pont factors are most relevant: the similarity of the marks, the similarity and nature of the goods and/or services, and the similarity of the trade channels for these goods and/or services.  See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.

 

The applicant’s proposed mark is SALT (stylized); the registered marks are SALT, SALT (and design) and SALT SOLUTIONS.

 

Comparison of the Proposed Mark to the Cited SALT Registrations

Comparison of the Respective Marks

In a likelihood of confusion determination, the examining attorney must compare the marks for similarities in sound, appearance, meaning or connotation.  In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (CCPA 1973); TMEP §1207.01(b).  Similarity in any one of these elements is sufficient to find a likelihood of confusion. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB (1988); In re Mack, 197 USPQ 755 (TTAB 1977); see TMEP §§1207.01(b).

 

The test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side-by-side comparison.  The issue is whether the marks create the same overall impression. See Racot, Inc. v. M.C. Becton, 214 F.2d 1322, 1329-30, 54 USPQ2d 1894, 1899 (Fed Cir. 2000); Visual Information Institute, Inc. v. Vicon Industries Inc., 209 USPQ 179 (TTAB 1980).  The focus is on the recollection of the average purchaser who normally retains a general rather than specific impression of trademarks.  Chemetron Corp. v. Morris Coupling & Clamp Co., 203 USPQ 537 (TTAB 1979); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975); TMEP §1207.01(b).

 

The examining attorney refuses registration of the proposed mark SALT on the grounds that it will cause a likelihood of confusion with the registered SALT and SALT (and design) marks owed by the same entity.  In this case, the applicant’s proposed mark so resembles the registered marks so as to render confusion as to source likely.  Indeed, the wording in the respective marks is identical.  The courts consistently and repeatedly found that similarity in sound alone is sufficient to support a finding of likelihood of confusion. See e.g., RE/MAX of Am., Inc., v. Realty Mart, Inc. 207 USPQ 960, 964 (TTAB 1980); Molenaar, Inc. v. Happy Toys Inc., 188 USPQ 469 (TTAB 1975); In re Cresco Mfg. Co., 138 USPQ 401 (TTAB 1963); TMEP §1207.01(b)(iv).  In sum, the examining attorney finds that the applicant’s proposed mark so resembles the cited SALT and SALT (and design) registrations in relation to sound, appearance, and meaning that confusion as to source is likely.

 

Comparison of the Proposed Mark to the Cited SALT SOLUTION Registration

Comparison of the Respective Marks

When making a similarity comparison for purposes of Section 2(d) analysis, the marks must be viewed in their entireties.  See TMEP §1207.01(b).  Nevertheless, marks may be confusingly similar in appearance where there are similar terms or phrases or similar parts of terms or phrases appearing in both applicant’s and registrant’s mark.  See e.g., Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689 (TTAB 1986), aff’d 1 USPQ2d 1813 (Fed. Cir. 1987) (COMMCASH and COMMUNICASH); In re Phillips-Van Heusen Corp., 228 USPQ 949 (TTAB 1986) (21 CLUB and “21” CLUB (stylized)); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985) (CONFIRM and CONFIRMCELLS); In re Collegian Sportswear Inc., 224 USPQ 174 (TTAB 1984) (COLLEGIAN OF CALIFORNIA and COLLEGIENNE); In re Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983) (MILTRON and MILLTRONICS); In re BASF A.G., 189 USPQ 424 (TTAB 1975) (LUTEXAL and LUTEX); TMEP §1207.01(b)(ii)-(iii).  In this case, the similar portion of both the applicant’s proposed mark and the registered mark is the identical term “SALT.”

 

The examining attorney refuses registration of the mark SALT on the grounds that it will cause a likelihood of confusion with the registered SALT SOLUTIONS mark because a significant portion of the applicant’s proposed mark has an identical sound, appearance, and meaning as that of the registered mark.  Similarity in sound alone has been found sufficient to support a finding of likelihood of confusion.  RE/MAX of Am., Inc., v. Realty Mart, Inc. 207 USPQ 960, 964 (TTAB 1980); Molenaar, Inc. v. Happy Toys Inc., 188 USPQ 469 (TTAB 1975); In re Cresco Mfg. Co., 138 USPQ 401 (TTAB 1963). TMEP §1207.01(b)(iv). 

 

The additional wording SOLUTIONS appearing in the cited registration does not alter this determination.  Although applicant’s mark does not contain the entirety of the registered mark, the applicant’s mark is likely to appear to prospective purchasers as a shortened form of registrant’s mark.  See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985)).  Thus, merely omitting some of the wording from a registered mark may not overcome a likelihood of confusion.  See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257; In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii).  In this case, the applicant’s mark does not create a distinct commercial impression from the registered mark because it contains some of the wording in the registered mark and does not add any wording that would distinguish it from that mark.

 

In sum, the similarity between the respective marks caused by the term SALT appearing in both marks outweighs the difference between them caused by the term SOLUTIONS appearing in the cited registration.  This is especially true considering, (as more fully explained below) that the respective financial information services are deemed to be highly related, if not identical, found in the same channels of trade, and marketed to the same consumers.  The courts have consistently and repeatedly found that where the goods and services of an applicant and registrant are “similar in kind and/or closely related,” the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as in the case of diverse goods and services.  See, In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1242, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004); TMEP §1207.01(b).  Accordingly, the examining attorney finds that the applicant’s proposed mark so resembles the registered mark SALT SOLUTIONS that confusion as to source is likely.

 

Comparison of the Respective Goods and 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).  It is well settled that the compared products and/or services need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i).  They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).

 

If the marks of the respective parties are identical or highly similar, the relationship between the goods and services of the respective parties need not be as close to support a finding of likelihood of confusion as might apply where differences exist between the marks. In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001); Amcor, Inc. v. Amcor Industries, Inc., 210 USPQ 70, 78 (TTAB 1981); TMEP §1207.01(a).  In addition, the Office must also consider any goods or services in the registrant’s normal fields of expansion in order to determine whether the registrant’s goods or services are related to the applicant’s identified goods or services for purposes of analysis under Section 2(d).  In re General Motors Corp., 196 USPQ 574 (TTAB 1977).  The test is whether purchasers would believe the product or service is within the registrant’s logical zone of expansion.  CPG Prods. Corp. v. Perceptual Play, Inc., 221 USPQ 88 (TTAB 1983); TMEP §1207.01(a)(v).

 

The examining attorney refuses registration of the mark SALT because the channels of trade in which the applicant’s goods and services travel are similar to those used by the registrants.  As amended below, the applicant’s goods and services comprise:

Digital materials, namely, downloadable videos and podcasts featuring information, news and editorial content in the fields of finance, economics, business, entrepreneurship and technology; and

Arranging, conducting and facilitating educational seminars, conferences, workshops and lectures, as well as an ongoing series of webcasts and television and radio programs in the fields of finance, economics, business, entrepreneurship and technology; Development, creation, production, distribution and post-production of television shows, videos, multimedia entertainment content and podcasts for others featuring information, news and editorial content in the fields of finance, economics, business, entrepreneurship and technology; Providing a website featuring curated digital materials, namely, providing a website featuring non-downloadable videos and podcasts featuring information, news and editorial content in the fields of finance, economics, business, entrepreneurship, and technology.

 

The relevant services named in Registration Nos. 4675828 (SALT), 5155463 (SALT and design) and 5155479 (SALT) comprise:

Providing educational presentations and on-line classes in the field of student finances, student loans, student debt management and student loan repayment, and distributing on-line educational materials in connection therewith; providing a website featuring educational materials in the nature of articles and videos on student finances, student loans, student debt management, student loan repayment, and achieving academic success in college.

 

The relevant services named in Registration No. 4875153 (SALT SOLUTIONS) comprise:

Printed matter, namely, columns and brochures on the subject of tax issues for businesses and individuals; and

Educational services, namely, conducting seminars and presentations in the field of tax matters and distribution of course material in connection therewith; providing an online regular column in the field of tax matters.

 

When analyzing an applicant’s and registrant’s goods and services for similarity and relatedness, that determination is based on the description of the goods and services stated in the application and registration at issue, not on extrinsic evidence of actual use.  See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)). 

 

Absent restrictions in an application or registration, the identified goods and services are presumed “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)).  In this case, the identifications set forth in the application and registration have no restrictions as to their nature, type, channel of trade or class of purchasers.  Therefore, it is presumed that these goods and services travel in the same channels of trade to the same class of purchasers.

 

In addition, it is noted that unrestricted and broad identifications are presumed to encompass all goods and services of the type described.  See In re Jump Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB 2006) (citing In re Elbaum, 211 USPQ 639, 640 (TTAB 1981)).  In this case, the applicant uses broad wording (finance, economics) to identify the subject matter of its educational services and downloadable videos and podcasts.  Therefore, the case law requires that the Office must presume that its educational seminars, conferences, workshops and lectures, as well as its webcasts, television and radio programs and downloadable videos and podcasts feature all kinds of financial and economic information—including student finances, student loans, student debt management and student loan repayment—the subject matter of the educational services specifically identified in the more narrow identification found in the cited SALT and SALT (and design) registrations. See, e.g., Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015); In re N.A.D., Inc., 57 USPQ2d 1872, 1874 (TTAB 2000).  Accordingly, the examining attorney must find the respective financial and economic education goods and services are highly related, if not identical, found in the same channels of trade and marketed to the same consumers.  As such, they are considered related for purposes of likelihood of confusion analysis.

 

Likewise, the subject matter of the applicant’s broadly identified financial education goods and services must be presumed to encompass the tax related subject matter found in the printed publications and educational services identified in the cited SALT SOLUTIONS registration. See, e.g., Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015); In re N.A.D., Inc., 57 USPQ2d 1872, 1874 (TTAB 2000).  In this case, the only difference between the applicant’s downloadable videos and podcasts and the registrant’s printed publications is the format of the goods, not the content contained therein.  Because the identified printed publications and downloadable videos and podcasts are deemed to include the same or highly similar financial subject matter, the respective goods must be found to be related despite their use of different formats.

 

In sum, given the similarity between the respective marks when viewed in light of the noted relatedness between the respective goods and services and the similarity between the channels of trade for these goods and services, it is likely that consumers will be confused as to the ultimate source of these products and services and associate the applicant’s proposed mark with the registered marks.  Accordingly, the examining attorney refuses registration of the applicant’s proposed mark pursuant to Section 2(d) of the Trademark Act.

 

Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.

 

Prior Pending Applications

During the search of the Office’s records, the examining attorney also discovered several potentially conflicting marks in prior-flied pending applications that may present a bar to registration of the applicant’s proposed mark.

 

Information regarding U.S. Application Serial Nos. 87935577 and 87378046 is enclosed. The actual or effective filing date of referenced applications precede the applicant’s filing date. (See attached referenced applications.) If the marks in the referenced applications register, the applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between these respective marks. See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq. Therefore, upon receipt of the 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, the applicant may present arguments in support of registration by addressing the issue of the potential conflict between the applicant’s mark and the marks in the referenced applications. The applicant’s election not to submit arguments at this time in no way limits the applicant’s right to address this issue later if a refusal under Section 2(d) issues.

 

Application Refused—Applicant Must Clarify if the Color White is a Feature of the Mark

Applicant must clarify whether the color white is being claimed as a feature of the mark.  See 37 C.F.R. §§2.37, 2.52(b)(1), 2.61(b); TMEP §§807.07(a) et seq.  Applicant submitted a black-and-white drawing of the mark and the color claim and description of the mark both reference the colors black and white.  However, it is unclear if the color white in the drawing is a feature of the mark or intended to represent background or transparent areas. See 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §§807.07 et seq.

 

To clarify whether the color white is claimed as a feature of the mark, applicant may satisfy one of the following:

 

(1)       If the color white is not a feature of the mark, applicant must submit an amended color claim and description of the mark that omits any reference to the color white.  See TMEP §§807.07(a)(ii), 808.02.  The following is suggested, if accurate: 

 

Color Claim Statement:  The color black is claimed as a feature of the mark.

 

Mark Description Statement:  The mark consists of the wording “SALT” appearing in stylized, black font.

 

(2)       If the color white is a feature of the mark, the applicant must submit a (a) new drawing showing the mark in the relevant colors so that the white part of the mark that is being claim is delineated from the background, (b) list all the colors that are a feature of the mark, and (c) amend the description, if appropriate, to specify where all the colors appear in the literal and design elements of the mark.  37 C.F.R. §§2.37, 2.52(b)(1); see TMEP §807.07(a)-(a)(ii).  Generic color names must be used to describe the colors in the mark, e.g., red, yellow, blue.  TMEP §807.07(a)(i)-(ii).  If black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark, applicant must so specify in the description.  See TMEP §807.07(d). 

 

The following color claim and description are suggested, if applicable and accurate:

 

Color Claim Statement:  The colors black and white are claimed as a feature of the mark.

 

Mark Description Statement:  The mark consists of the wording “SALT” appearing in stylized, black font surrounded by a white rectangle.  Other than the color white appearing in the rectangle surrounding the term “SALT,” the color white represents background or transparent areas and is not part of the mark.

 

For more information about drawings and instructions on how to submit a new drawing and a color claim and/or description online using the Trademark Electronic Application System (TEAS) form, see the Drawing webpage.

 

 

EXAMINER’S AMENDMENT

 

APPLICATION HAS BEEN AMENDED:  In accordance with the authorization granted by the individual identified in the Priority Action section above, the trademark examining attorney has amended the application as indicated below.  Please advise the undersigned immediately of any objections.  TMEP §707.  Any amendments to the identification of goods and/or services may clarify or limit the goods and/or services, but may not add to or broaden the scope of the goods and/or services.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq.

 

Amendment of the Identification of Goods for International Class 009

The identification of goods for International Class 009 is amended to read as follows:

 

Digital materials, namely, downloadable videos and podcasts featuring information, news and editorial content in the fields of finance, economics, business, entrepreneurship and technology.

 

See TMEP §§1402.01, 1402.01(e).

 

Amendment of the Identification of Services for International Class 041

The identification of services for International Class 041 is amended to read as follows:

 

Arranging, conducting and facilitating educational seminars, conferences, workshops and lectures, as well as an ongoing series of webcasts and television and radio programs in the fields of finance, economics, business, entrepreneurship and technology; Development, creation, production, distribution and post-production of television shows, videos, multimedia entertainment content and podcasts for others featuring information, news and editorial content in the fields of finance, economics, business, entrepreneurship and technology; Providing a website featuring curated digital materials, namely, providing a website featuring non-downloadable videos and podcasts featuring information, news and editorial content in the fields of finance, economics, business, entrepreneurship, and technology.

 

See TMEP §§1402.01, 1402.01(e).

 

Deletion of the Identification of Services in International Class 042

The application is amended to delete the identification of services for International Class 042 in its entirety and move these services to International Class 041. See TMEP §§1402.01, 1402.01(e).

 

Applicant’s Response

There is no required format or form for responding to an Office action.  For this application to proceed further, the applicant must explicitly address each refusal and/or requirement raised in this Office action.  If the action includes a refusal, the applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register.  The applicant may also have other options specified in this Office action for responding to a refusal and should consider those options carefully.  To respond to requirements and certain refusal response options, the applicant should set forth in writing the required changes or statements.  For more information and general tips on responding to USPTO Office actions, response options, and how to file a response online, Please see “Responding to Office Actions” and the informational video “Response to Office Action” on the USPTO’s website.

 

If the applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end and the trademark will fail to register.  See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a); TMEP §§718.01, 718.02.  Additionally, the USPTO will not refund the application filing fee, which is a required processing fee.  See 37 C.F.R. §§2.6(a)(1)(i)-(iv), 2.209(a); TMEP §405.04.

 

When an application has abandoned for failure to respond to an Office action, an applicant may timely file a petition to revive the application, which, if granted, would allow the application to return to active status.  See 37 C.F.R. §2.66; TMEP §1714.  The petition must be filed within two months of the date of issuance of the notice of abandonment and may be filed online via the Trademark Electronic Application System (TEAS) with a $100 fee.  See 37 C.F.R. §§2.6(a)(15)(ii), 2.66(a)(1), (b)(1)

 

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.  The only attorneys who may sign responses and otherwise 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 U.S. commonwealths/territories; and (2) certain Canadian agents and/or attorneys.  See 37 C.F.R. §§2.17(e), 11.14(a), (c); TMEP §602.  If an applicant changes attorneys, the newly retained attorney may not sign responses until the applicant files a new power and/or revocation of attorney.  See 37 C.F.R. §2.18(a)(7); TMEP §604.03.

 

If an applicant is initially represented by an attorney, and then later retains another attorney from a different firm, the newly retained attorney may not sign responses until the applicant files a new power and/or revocation of attorney.  See 37 C.F.R. §2.18(a)(7); TMEP §604.03.

 

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.  If the applicant has technical questions about the TEAS response to Office action form, applicant can review the electronic filing tips available online at http://www.gov.uspto.report/teas/eFilingTips.htm and email technical questions to TEAS@uspto.gov.

 

If the applicant or its appointed attorney has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

/Michael Tanner/

Michael Tanner

Trademark Attorney

Law Office 119

Telephone: 571-272-9706

Email: Michael.Tanner@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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 3/12/2019 FOR U.S. APPLICATION SERIAL NO. 88205742

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click 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)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 3/12/2019 (or sooner if specified in the Office action).  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.  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

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.  Instead, the USPTO recommends that you respond online using the TEAS response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@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.