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:  September 30, 2019

 

INTRODUCTION

 

This Office action is supplemental to and supersedes the previous Office action issued on March 5, 2019 in connection with this application.  Based on information and/or documentation in applicant’s response, the trademark examining attorney now issues the following new requirement for a disclaimer of descriptive wording and notification that the amendment to Section 1(a) is not acceptable, as discussed below.  See TMEP §§706, 711.02. 

 

In the previous Office action, the trademark examining attorney refused registration of the applied-for mark based on Trademark Act Section 2(e)(1) for being primarily merely descriptive.  In addition, applicant was required to amend the identification of goods to avoid deceptiveness.

 

Based on applicant’s response, the trademark examining attorney notes that the requirement for an amendment to the identification of goods has been satisfied.  See TMEP §713.02. 

 

However, because applicant did not acceptably amend to Section 1(a) through an Allegation of Use, the refusal under Trademark Act Section 2(e)(1) is maintained and continued.

 

The following is a SUMMARY OF NEW ISSUES that applicant must address:

• Disclaimer Required
• Amendment to Section 1(a) Not Acceptable

 

Applicant must respond to all issues raised in this Office action and the previous Office action, within six (6) months of the date of issuance of this Office action.  37 C.F.R. §2.62(a); see TMEP §711.02.  If applicant does not respond within this time limit, the application will be abandoned.  37 C.F.R. §2.65(a).

 

DISCLAIMER REQUIRED

 

Applicant must provide a disclaimer of the unregistrable part(s) of the applied-for mark even though the mark as a whole appears to be registrable.  See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a).  A disclaimer of an unregistrable part of a mark will not affect the mark’s appearance.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965).

 

In this case, applicant must disclaim the word “SILICONE” 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 identification of goods in the application indicates that applicant's goods include “silicone”.  Therefore, this wording merely describes the type of goods applicant provides.

 

Applicant may respond to this issue by submitting a disclaimer in the following format: 

 

No claim is made to the exclusive right to use “SILICONE” apart from the mark as shown. 

 

For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage. 

 

AMENDMENT TO SECTION 1(a) NOT ACCEPTABLE

 

Applicant has requested to amend the application from an intent-to-use basis under Trademark Act Section 1(b) to a use in commerce basis under Section 1(a).  However, applicant did not file and satisfy the legal requirements for an allegation of use (either an amendment to allege use or a statement of use).  See 37 C.F.R. §2.35(b)(8); TMEP §806.03(e).  Accordingly, the requested amendment is not accepted and the Section 1(b) basis remains the operative basis. 

 

An applicant may amend an application from intent to use to use in commerce only by filing an allegation of use, which has various legal requirements including providing verified dates of first use of the mark, a verified statement that the mark is in use in commerce, a specimen showing actual use of the mark in commerce for each international class, and a fee.  37 C.F.R. §2.35(b)(8); TMEP §806.01(b); see 37 C.F.R. §§2.76, 2.88.  In addition, certain time restrictions apply to filing allegations of use.  See 37 C.F.R. §§2.76(a), 2.88(a); TMEP §§1104.03, 1109.04. 

 

For more information about an allegation of use and requirements for filing either an amendment to allege use or statement of use, please go to the Intent-to-Use Applications webpage.  Allegations of use may be filed online using the Trademark Electronic Application System (TEAS) “Statement of Use/Amendment to Allege Use for Intent-to-Use Application,” form number one (1), located under Intent to Use Forms.

 

ASSISTANCE

 

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.  

 

 

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

 

 

/Elizabeth A. O'Brien/

Examining Attorney

Law Office 105

(571) 272-0046

Elizabeth.OBrien@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 September 30, 2019 for

U.S. Trademark Application Serial No. 88214478

 

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. 

 

 

/Elizabeth A. O'Brien/

Examining Attorney

Law Office 105

(571) 272-0046

Elizabeth.OBrien@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 September 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.”