| To: | ETHGlobal (jurzedowski@bitlaw.com) |
| Subject: | U.S. TRADEMARK APPLICATION NO. 88208631 - ETHGLOBAL - 5834 |
| Sent: | 3/1/2019 12:22:25 PM |
| Sent As: | ECOM124@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 |
“UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
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U.S. APPLICATION SERIAL NO. 88208631
MARK: ETHGLOBAL
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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: ETHGlobal
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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: 3/1/2019
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.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
THIS PARTIAL REFUSAL APPLIES ONLY TO THE GOODS AND SERVICES SPECIFIED THEREIN
Applicant seeks to register the mark “ETHGlobal” for “Promotional items, namely, stickers; Promotional items, namely, pencils, pens, pins, buttons, journals, books, magazines, journals; Promotional items, namely, posters, decals, notebooks” currently listed in Class 14, “Promotional items, namely, t-shirts; Promotional items, namely, shirts, sweatshirts, jackets, pants, shorts, athletic wear, caps, hats, toques” in Class 25, “Arranging and conducting competitions in the field of cryptocurrency, blockchain and distributed computing technology; Educational services, namely, conducting classes, presentations, seminars, conferences, and workshops in the field of digital currency, digital coins, cryptocurrency, blockchain and distributed computing technology and management and distribution of course and educational materials in connection therewith; Organizing, arranging, and conducting educational conferences, seminars, festivals, symposia, educational conventions, and professional training events in the field of digital currency, digital coins, cryptocurrency, blockchain and distributed computing technology and blockchain software; Operation of a website providing information regarding competitions, educational conferences, seminars, festivals, symposia, educational conventions, and professional training events in the field of digital currency, digital coins, cryptocurrency, blockchain and distributed computing technology and blockchain software” in Class 41, and “information in the field of blockchain and distributed computing technology and blockchain software through mobile applications and the internet” as currently listed in Class 36.
The registered mark “ETH” identifies “Paper, cardboard and goods made of these materials, included in this class, namely, cardboard boxes, paper boxes; printed matter, namely, books in the field of science and technology; bookbinding material; photographs, stationery; adhesives for stationery or household purposes; office requisites, except furniture, namely, staplers, paper hole punches, paper trimmers; instructional or teaching material, except apparatus, namely, printed or paper teaching material and study guides in the fields of science and technology; plastic materials for packaging, namely, plastic bubble packs, plastic bags” in Class 16, “Education, namely, arranging and conducting of conferences, congresses, conventions, symposiums, exhibitions, classes, lectures, seminars and workshops for educational purposes in the fields of science and technology; science and technology training; organization of events for cultural activities; Entertainment, namely, live musical performances, live theatrical performances, ballroom and dancing events, cinema events; Sporting activities in the nature of soccer, baseball, basketball, tennis, dance, slacklining, bouldering, chess, table tennis, and table football competitions” in Class 41, and “Providing scientific information, advice, and consultancy in the fields of engineering, physics, chemistry, biology, psychology, geosciences, architecture, biotechnology, information technology, informatics, material sciences, mathematics, pharmacy, agricultural sciences, earth sciences, healthcare technology, food sciences, political sciences, and research and development relating thereto; design and development of computers and programs for computers” in Class 42.
The registered mark “ETHER” identifies “Clothing, namely, Shirts and Pants” in Class 25.
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 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 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).
When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.” Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b). The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks. In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (CCPA 1971)); TMEP §1207.01(b).
In this case, the applicant’s mark, ETHGLOBAL, creates a similar overall commercial impression to the cited registered mark, ETH, because the initial dominant element in the applicant’s mark is the entirety of the registered mark. Further, the additional wording in the applicant’s mark, GLOBAL, is less distinctive because it is non-source identifying as shown by the attached evidence from American Heritage dictionary that defines global as “Of, relating to, or involving the entire earth; worldwide” which in this context would demonstrate the nature of the source as a worldwide business.
Further, the applicant’s mark, ETHGLOBAL, creates a similar overall commercial impression to the cited registered mark, ETHER, because the lettering ETH is commonly known as an abbreviation for the cryptocurrency, Ether, as shown by the attached evidence from Investopedia. As such, the applicant’s mark references ETHER with its initial lettering, and as explained above, the wording GLOBAL is less distinctive.
As such, the marks are highly similar and likely to cause confusion.
Relatedness of the Goods and Services
In the case of ETH, the application uses broad wording to describe “promotional items, namely, stickers” and “promotional items, namely, books”, which presumably encompasses all goods of the type described, including registrant’s more narrow “adhesives for stationery or household purposes” and “printed matter, namely, books in the field of science and technology”. Further, the registration uses broad wording to describe “Education, namely, arranging and conducting of conferences, congresses, conventions, symposiums, exhibitions, classes, lectures, seminars and workshops for educational purposes in the fields of science and technology; science and technology training” and “Providing scientific information, advice, and consultancy in the fields of information technology and research and development relating thereto”, which presumably encompasses all services of the type described, including applicant’s more narrow “Educational services, namely, conducting classes, presentations, seminars, conferences, and workshops in the field of digital currency, digital coins, cryptocurrency, blockchain and distributed computing technology and management and distribution of course and educational materials in connection therewith; Organizing, arranging, and conducting educational conferences, seminars, festivals, symposia, educational conventions, and professional training events in the field of digital currency, digital coins, cryptocurrency, blockchain and distributed computing technology and blockchain software” and “Online information in the field of distributed computing technology and blockchain software through mobile applications and the internet”. 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 goods and 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)).
In the case of ETHER, the application uses broad wording to describe “clothing, namely, shirts and pants” which presumably encompasses all goods of the type described, including applicant’s more narrow “Promotional items, namely, t-shirts; Promotional items, namely, shirts, pants, shorts, athletic wear”. 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 goods and 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 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 services are related.
For these reasons, consumers are likely to encounter the parties’ goods and services in the same market channels. Given the strong similarities between the key elements of the parties’ marks, consumers encountering the marks in the same commercial contexts are likely to confuse the marks and mistake the underlying sources of related goods and services provided under the marks. Accordingly, registration is refused under Trademark Act Section 2(d).
(1) Deleting the goods and services to which the refusal pertains;
(2) Filing a request to divide out the goods and services that have not been refused registration, so that the mark may proceed toward publication for opposition for those goods or services to which the refusal does not pertain. See 37 C.F.R. §2.87. See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide). If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to all outstanding issues in this Office action, including the refusal. 37 C.F.R. §2.87(e).
The applicant should also note the following potential grounds for refusal. If applicant responds to this action, applicant should note that the application may be suspended if the earlier-filed application below is still pending.
The filing dates of pending U.S. Application Serial Nos. 87648278 (ETHNEWS), 87795186 (ETHER), 87791341 (ETHER), and 87504291 (ETHER) 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.
However, the applicant must respond to address the following refusal and requirements.
SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE
“Whether consumers could guess what the product [or service] is from consideration of the mark alone is not the test.” In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).
Applicant has applied to register the mark ETHGLOBAL for use in connection with cryptocurrency-related goods and services.
See attached dictionary evidence that defines “global” as “Of, relating to, or involving the entire earth; worldwide”. Furthermore, the attached evidence of articles from Investopedia, Wikipedia, Coindesk and Okex demonstrates that ETH is a common abbreviation for the cryptocurrency formed by the block chain formed by Ethereum, namely, Ether. Therefore, the terms “ETHGLOBAL” in the context of cryptocurrency services describes a feature of the goods and services as related to the cryptocurrency named Ether, and that the goods and services are provided worldwide.
For these reasons, the applicant’s mark “ETHGLOBAL” is not inherently distinctive of the good and services because, rather than perceive the mark as indicating a particular, unique source, consumers will view the mark as merely describing a feature of the goods and services using terms commonly used for similar goods and services.
(1) Deleting the classes to which the refusal pertains;
(2) Filing a request to divide out the goods and/or services that have not been refused registration, so that the mark may proceed toward publication for opposition in the classes to which the refusal does not pertain. See 37 C.F.R. §2.87. See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide). If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to all outstanding issues in this Office action, including the refusal. 37 C.F.R. §2.87(e).; or
(3) Amending the basis for such classes, if appropriate. TMEP §806.03(h). (The basis cannot be changed for applications filed under Trademark Act Section 66(a). TMEP §1904.01(a).)
(1) STATEMENTS: The following statements: “The applicant is the owner of the mark sought to be registered.” and “The applicant is using the mark in commerce on or in connection with all the goods/services in the application or notice of allowance, or as subsequently modified.”
(2) DATES OF FIRST USE: The date of first use of the mark anywhereon or in connection with the goods and/or services, and the date of first use of the mark in commerceas a trademark or service mark. See more information about dates of use.
(3) GOODS AND/OR SERVICES: The goods and/or services specified in the application.
(4) SPECIMEN: A specimen showing how applicant uses the mark in commerce for each class of goods and/or services for which use is being asserted. If a single specimen supports multiple classes, applicant should indicate which classes the specimen supports rather than providing multiple copies of the same specimen. See more information about specimens.
(5) FEE(S): A filing fee for each international class of goods and/or services for which use is being asserted (find current fee information).
(6) VERIFICATION: Verification of (1) through (4) above in an affidavit or signed declaration under 37 C.F.R. §2.20. See more information about verification.
See 37 C.F.R. §2.76(b); TMEP §1104.08.
An amendment to allege use may be filed online via the Trademark Electronic Application System (TEAS). Filing an amendment to allege use is not considered a response to an Office action. 37 C.F.R. §2.76(h); TMEP §1104. An applicant must file a separate response to any outstanding Office action. TMEP §1104; see 37 C.F.R. §2.76(h).
IDENTIFICATION AND CLASSIFICATION OF GOODS AND SERVICES REQUIREMENT
The applicant insufficiently describes the following goods in Class 9:
The applicant insufficiently describes the following goods in Class 16:
The applicant insufficiently describes the following goods in Class 25:
The applicant insufficiently describes the following goods in Class 36:
The applicant insufficiently describes the following goods in Class 41:
Applicant may substitute the following wording, if accurate:
Class 9: Computer software for developing, building, and operating distributed applications and blockchain software; Computer software for managing computer programmer events including, event registration, event management, team management, code submission; Promotional items, namely, phone cases, screen protectors comprised of {specify material composition, e.g., acrylic, tempered glass, plastic, etc.} adapted for use with portable electronic device; Promotional items, namely, eyeglass lanyards
Class 14: Promotional items, namely, key chains
Class 16: Promotional items, namely, pencils, pens, push pins, blank journals, printed books in the field of {indicate field}, magazines in the field of {indicate field}, blank journals; Promotional items, namely, posters, decals, notebooks
Class 18: Promotional items, namely, umbrellas, tote bags, back packs, sports bags
Class 21: Promotional items, namely, coffee mugs, travel mugs, water bottles sold empty
Class 22: Promotional items, namely, lanyards for holding {indicate use, e.g., badges, keys}
Class 25: Promotional items, namely, t-shirts; Promotional items, namely, shirts, sweatshirts, jackets, pants, shorts, athletic wear in the nature of {indicate type, e.g., shirts}, caps being headwear, hats, toques
Class 26: Promotional items, namely, novelty buttons
Class 36: Providing online information in the field of digital currency, digital coins, cryptocurrency, blockchain
Class 41: Entertainment services, namely, arranging and conducting competitions in the field of cryptocurrency, blockchain and distributed computing technology; Educational services, namely, conducting classes, presentations, seminars, conferences, and workshops in the field of digital currency, digital coins, cryptocurrency, blockchain and distributed computing technology and management and distribution of course and educational materials in connection therewith; Organizing, arranging, and conducting educational conferences, seminars, festivals, symposia, educational conventions, and professional training events in the field of digital currency, digital coins, cryptocurrency, blockchain and distributed computing technology and blockchain software; Operation of a website providing information regarding competitions, educational conferences, seminars, festivals, symposia, educational conventions, and professional training events in the field of digital currency, digital coins, cryptocurrency, blockchain and distributed computing technology and blockchain software
Class 42: Providing online information in the field of distributed computing technology and blockchain software through mobile applications and the internet
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.
MULTIPLE-CLASS APPLICATION REQUIREMENTS
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule). The application identifies goods and/or services that are classified in at least eleven classes; however, applicant submitted fees sufficient for only five classes. Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
See an overview of the requirements for a Sections 1(b) and 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
ENTITY REQUIREMENT
If applicant is a corporation, applicant must specify the U.S. state or foreign country under which it is incorporated. TMEP §803.03(c).
If applicant is an association, applicant must specify the U.S. state or foreign country under whose laws the applicant is organized or exists, and indicate whether the association is incorporated or unincorporated. Id.
If applicant is a U.S. partnership, applicant must also list, if not yet specified, the names, legal entities, and national citizenship (for individuals), or the U.S. state or foreign country of organization or incorporation (for businesses) of all general partners. TMEP §803.03(b). For foreign partnerships, the names and citizenships of the general partners are not required. See id.
If applicant is a U.S. joint venture, applicant must also specify the names, legal entities, and national citizenship (for individuals) or the U.S. state or foreign country of organization or incorporation (for businesses) of all active members of the joint venture. Id. For foreign joint ventures, the names and citizenships of the active members are not required. See id.
If, in response to the above request, applicant provides information indicating that it is not the owner of the mark, registration will be refused because the application was void as filed. See 37 C.F.R. §2.71(d); TMEP §§803.06, 1201.02(b). An application must be filed by the party who owns or is entitled to use the mark as of the application filing date. See 37 C.F.R. §2.71(d); TMEP §1201.02(b).
INTENT TO PERFECT ADVISORY
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).
Response Guidelines
Please call or email the assigned trademark examining attorney with questions about this Office action. Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action. See TMEP §§705.02, 709.06. Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of 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.
/Alexandra El-Bayeh/
Trademark Examining Attorney
Law Office 124
(571) 270-5911
alexandra.el-bayeh@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.
