Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

NONFINAL OFFICE ACTION

 

The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned.  Respond using the Trademark Electronic Application System (TEAS).  A link to the appropriate TEAS response form appears at the end of this Office action. 

 

 

Issue date:  August 30, 2019

 

 

 

 

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.  

 

This Office action is in response to applicant’s communication filed on 8/20/19.

 

In the previous office action the following issues were raised:

 

 

1. COMPLETE DESCRIPTION OF MARK REQUIRED
2. EXPLANATION OF MARK’S SIGNIFICANCE REQUIRED
3. IDENTIFICATION AND CLASSIFICATION OF SERVICES
4. FOREIGN REGISTRATION CERTIFICATE REQUIRED

 

Applicant’s response has satisfied Nos. 1 3, and 4 above.

 

As detailed below, the applicant continues to be required to explain the significance of the mark.

 

Moreover, the applicant is informed that the drawing cannot be accepted because the mark is presented in the color blue, whereas the foreign registration certificate show the mark in the color black without a claim of color.

 

This is a non-final action.

 

 

MARK DIFFERS ON DRAWING AND FOREIGN CERTIFICATE

The USPTO cannot accept applicant’s drawing of the mark in the U.S. application because it does not match the mark in the foreign registration; that is, the mark in the drawing is not a “substantially exact representation of the mark” in the foreign registration.  See 37 C.F.R. §2.51(c); TMEP §§807.12(b), 1011.01.  Only slight, inconsequential variations are permitted between the mark in the U.S. application and the mark in the foreign registration.  In re Hacot-Colombier, 105 F.3d 616, 619, 41 USPQ2d 1523, 1525 (Fed. Cir. 1997); In re Larios S.A., 35 USPQ2d 1214, 1216-17 (TTAB 1995); TMEP §1011.01. 

 

In this case, the U.S. drawing displays the mark in the color blue.  However, the foreign registration displays the mark in the color black.  The mark in the U.S. drawing does not match the mark on the foreign registration because the foreign registration does not specify that the mark is blue or show the mark in blue.

 

Applicant may respond by satisfying one of the following:

 

(1)        Submit a new black and white drawing of the mark that matches the foreign registration and an amendment of the description that agrees with the new drawing, deleting and any reference to color.  Applicant should also delete the color claim.  See 37 C.F.R. §§2.37, 2.72(c); TMEP §§807.12(b), 1011.03.  The following amended description is suggested, if accurate:  “The mark consists of the letters “SPP” in stylized font.”  .  Applicant may amend the mark in the drawing to match the mark in the foreign registration but may not make any other changes or amendments that would materially alter the drawing of the mark.  See 37 C.F.R. §2.72(c); TMEP §§807.14 et seq., 1011.03. 

 

(2)        Submit a request to amend the filing basis to Trademark Act Section 1(a) or 1(b), if applicant can satisfy the requirements for the chosen basis.  See 15 U.S.C. §1051(a)-(b); 37 C.F.R. §2.35(b)(1); TMEP §806.03.  A Section 1 basis does not require applicant to submit a foreign registration but requires evidence of applicant’s mark in use in commerce.  See 15 U.S.C. §1051(a)-(b); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a), 2.76(b)(2), 2.88(b)(2); TMEP §904.

 

For more information about drawings, amending the basis, and instructions on how to satisfy these response options online using the Trademark Electronic Application System (TEAS) response form, see the Drawing webpage.

 

 

 

CONTINUED REQUIREMENT: EXPLANATION OF MARK’S SIGNIFICANCE REQUIRED

In its response, applicant has referred to the letters “SSP” rather than “SPP”.   Accordingly, the requirement below is hereby continued and maintained.

To permit proper examination of the application, applicant must explain whether the letters in the mark “SPP” have any significance in the marketing industry or multimedia content industry or as applied to applicant’s services, or if such letters represent a “term of art” within applicant’s industry.  See 37 C.F.R. §2.61(b); TMEP §814.  Failure to comply with a request for information is grounds for refusing registration.  In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.

 

 

 

 

 

How to respond.  Click to file a response to this nonfinal Office action  

 

 

/John M.C. Kelly/

John M.C. Kelly

Examining Attorney

Law Office 119

571-272-9412

john.kelly@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on August 30, 2019 for

U.S. Trademark Application Serial No. 88209506

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/John M.C. Kelly/

John M.C. Kelly

Examining Attorney

Law Office 119

571-272-9412

john.kelly@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from August 30, 2019, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond.

 

 

 

GENERAL GUIDANCE

·         Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·         Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·         Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”