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:  October 15, 2019

 

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on September 6, 2019.

 

In a previous Office action(s) dated March 6, 2019, applicant was required to satisfy the following requirement(s):  (1) clarify the mark description and color claim; (2) submit a new drawing of the mark; (3) amend the identification of services; and (4) disclaim descriptive wording in the mark.

 

Based on applicant’s response, the trademark examining attorney notes that the following requirement(s) have been satisfied:  (1) definite amended identification provided, and (2) disclaimer of “VEGAN” provided.  See TMEP §713.02. 

 

Further, applicant has provided an amended drawing of the mark that would materially alter the mark in the drawing filed in the original application, thus the proposed amendment will not be entered, and the previous drawing of the mark will remain operative.  Accordingly, for the reasons set forth below, the following requirements are maintained and continued:  (1) Amend Description of Mark and Color Claim Clarification Required; and (2) Mark Image Unclear.  See TMEP §§706, 711.02. 

 

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

 

•        NEW ISSUE:  Drawing of the Mark

•        Amended Description of Mark and Color Claim Required

•        Mark Image Unclear

 

 

DRAWING OF THE MARK

 

Applicant has requested to amend the mark in the application.  The USPTO cannot accept the proposed changes because they would materially alter the mark in the drawing filed with the original application or as previously amended.  37 C.F.R. §2.72(a)(2), (b)(2); TMEP §807.14.  Accordingly, the proposed amendment will not be entered; the previous drawing of the mark will remain operative and the initial drawing is still not acceptable.  See TMEP §807.17. 

 

The original drawing shows the mark as follows:  A green, incomplete, single line circle with the green wording “VEGAN” at the top of the circle and the transparent letter “V” appearing within an upside-down green triangle under “VEGAN” in the center of the circle.  The green wording “BEVVEG!” connects the curved lines of the circle to form the bottom of the circle.  The white in the mark represents background and is not claimed as a feature of the mark. 

 

The proposed amended drawing shows the mark as follows:  An incomplete single line circle with the wording “VEGAN” at the top of the circle and the letter “V” appearing within an upside-down triangle under “VEGAN” in the center of the circle.  The wording “BEVEG!” connects the curved lines of the circle to form the bottom of the circle.  The letter “V” in the wording “BEVEG!” appears within an upside-down triangle.  

 

The USPTO cannot accept an amendment to a mark if it will materially alter the mark in the drawing filed with the original application, or in a previously accepted amended drawing.  37 C.F.R. §2.72(a)(2), (b)(2); TMEP §807.14.  An amendment to the mark is material when the USPTO would need to republish the mark with the change in the USPTO Trademark Official Gazette to fairly present the mark to the public.  In re Thrifty, Inc., 274 F.3d 1349, 1352, 61 USPQ2d 1121, 1123-24 (Fed. Cir. 2001) (citing In re Hacot-Columbier, 105 F.3d 616, 620, 41 USPQ2d 1523, 1526 (Fed. Cir. 1997)); TMEP §807.14. 

 

That is, an amendment is material if the altered mark does not retain “the essence of the original mark” or if the new and old forms do not “create the impression of being essentially the same mark.”  In re Hacot-Columbier, 105 F.3d at 620, 41 USPQ2d at 1526 (quoting Visa Int’l Serv. Ass’n v. Life-Code Sys., Inc., 220 USPQ 740, 743-44 (TTAB 1983)); see, e.g., In re Who? Vision Sys., Inc., 57 USPQ2d 1211, 1218 (TTAB 2000) (amendment from “TACILESENSE” to “TACTILESENSE” a material alteration); In re CTB Inc., 52 USPQ2d 1471, 1475 (TTAB 1999) (amendment of TURBO with a design to just the typed word TURBO without design a material alteration). 

 

When determining materiality, the addition of any element that would require a further search of the USPTO database for conflicting marks is also relevant.  In re Guitar Straps Online LLC, 103 USPQ2d 1745, 1747 (TTAB 2012) (citing In re Pierce Foods Corp., 230 USPQ 307, 308-09 (TTAB 1986)); In re Who? Vision Sys. Inc., 57 USPQ2d at 1218-19; TMEP §807.14.

 

In the present case, applicant’s proposed amendment would materially alter the mark in the drawing filed with the original application or as previously amended because changing the wording “BEVVEG” to “BEVEG” would alter the commercial impression of the mark and require a further search of the USPTO database.

 

To avoid the application from abandoning, applicant must respond to this issue.  TMEP §807.17.  Applicant may respond by (1) withdrawing the request to amend the drawing, or (2) arguing that the proposed amendment is not a material alteration of the mark.

 

For more information about changes to the mark in the drawing after the application filing date, please go to the Drawing webpage.

 

 

AMENDED DESCRIPTION OF MARK AND COLOR CLAIM CLARIFICATION REQUIRED

 

Applicant’s proposed amendment to the drawing would materially alter the mark in the drawing filed with the original application, thus the previous drawing of the mark will remain operative and the requirement to amend the mark description and clarify the color claim is MAINTAINED and CONTINUED.

 

Applicant must clarify whether color is a feature of the mark because the drawing shows the mark in color but the application includes a statement that color is not a feature of the mark and does not include a color claim or description referencing color.  See 37 C.F.R. §§2.52, 2.61(b). 

 

To clarify whether color is a feature of the mark, applicant may respond by satisfying one of the following:

 

(1)       If color is not a feature of the mark, applicant must submit a new drawing showing the mark only in black and white.  In this case, amending the mark to delete color would not be considered a material alteration; however, any other amendments to the drawing will not be accepted if they would materially alter the mark.  37 C.F.R. §2.72; see TMEP §§807.07(c), 807.14 et seq.  

 

(2)       If color is a feature of the mark, applicant must provide a complete list of all the colors claimed as a feature of the mark and a description of the literal and design elements that specifies where all the colors appear in those elements.  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 are not being claimed as a color feature of the mark, applicant must exclude them from the color claim and include in the description a statement that the colors black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark.  See TMEP §807.07(d).

 

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

 

Color claim:  “The color green is claimed as a feature of the mark.”

 

Description:  “The mark consists of a green, incomplete, single line circle with the green wording “VEGAN” at the top of the circle and the transparent letter “V” appearing within an upside-down green triangle under “VEGAN” in the center of the circle.  The green wording “BEVVEG!” connects the curved lines of the circle to form the bottom of the circle.  The white in the mark represents background and is not claimed as a feature of the mark.”

 

See TMEP §807.07(a)(i)-(b).

 

 

MARK IMAGE UNCLEAR

 

Applicant’s proposed amendment to the drawing would materially alter the mark in the drawing filed with the original application, thus the previous drawing of the mark will remain operative and the requirement to submit a clear drawing of the mark is MAINTAINED and CONTINUED.

 

The drawing is not acceptable because the digitized image of the mark is unclear and does not show all aspects of the mark in sufficient detail.  See TMEP §807.04(a).  A clear drawing of the mark is an application requirement.  37 C.F.R. §2.52. 

 

Therefore, applicant must submit a new drawing showing a clear depiction of the mark.  All lines must be clean, sharp and solid, and not fine or crowded.  37 C.F.R. §§2.53(c), 2.54(e); TMEP §§807.05(c), 807.06(a).  Additionally, the USPTO will not accept a new drawing in which there are amendments or changes that would materially alter the applied-for mark.  37 C.F.R. §2.72; see TMEP §§807.13 et seq., 807.14 et seq.

 

For more information about drawings and instructions on how to submit a drawing, see the Drawing webpage.

 

 

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.  

 

 

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

 

 

/Chioma (Bata) Oputa/

Examining Attorney

Law Office 103

571-272-5234

chioma.oputa@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 October 15, 2019 for

U.S. Trademark Application Serial No. 88215077

 

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. 

 

 

/Chioma (Bata) Oputa/

Examining Attorney

Law Office 103

571-272-5234

chioma.oputa@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 October 15, 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.”