To: | King, Joshua (LeadDoggtony87@gmail.com) |
Subject: | U.S. Trademark Application Serial No. 88219120 - LEADDOGG - N/A |
Sent: | September 16, 2019 09:48:38 AM |
Sent As: | ecom104@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88219120
Mark: LEADDOGG
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Correspondence Address:
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Applicant: King, Joshua
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Reference/Docket No. N/A
Correspondence Email Address: |
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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 16, 2019
Applicant’s communication of August 7, 2019 is acknowledged. Applicant’s amendment to the drawing is not acceptable, and will not be entered for the reasons below. The following refusals from the March 13, 2019, office action are maintained and continued:
Applicant’s response raises new issues. As such, this non-final action is being sent to address those issues.
DRAWING AMENDMENT NOT ACCEPTABLE
The original drawing shows the mark as a dog with a crown above the wording “leaddog”. The proposed amended drawing shows the mark as the letters LD with a crown.
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 the deletion of the design element and the wording “leaddog” changes the impression of the mark.
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.
APPLICANT ASSERTS 44(D) BASIS
Applicant has asserted a 44(d) claim of priority, but has failed to provide the required information regarding the foreign application. If this basis was entered in error, the applicant should delete the 44(d) Priority Claim.
TRANSLATION NOT REQUIRED
VOLUNTARY DISCLAIMER
Therefore, applicant may request to withdraw this disclaimer from the application. If applicant does not expressly request its withdrawal, the disclaimer will remain in the application and will be printed on the registration certificate.
UNNECESSARY 2(f) CLAIM
Applicant may withdraw this claim by instructing the trademark examining attorney to delete it from the application record. See id. If applicant does not withdraw the claim, it will remain in the application record and be printed on the registration certificate. See TMEP §1212.10.
A claim of acquired distinctiveness may be construed as a concession by applicant that the entire applied-for mark is not inherently distinctive. See Cold War Museum, Inc. v. Cold War Air Museum, Inc., 586 F.3d 1352, 1358, 92 USPQ2d 1626, 1629 (Fed. Cir. 2009) (citing Yamaha Int’l Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 1577, 6 USPQ2d 1001, 1005 (Fed. Cir. 1988)); TMEP §1212.02(b).
CONCURRENT USE CLAIM
Applicant may respond to this issue by either (1) requesting that the concurrent use claim be deleted from the application or (2) keeping the claim and providing the legal basis for it, as explained in the following paragraph. See TMEP §1207.04(c)-(d)(i).
To claim concurrent use in an application, applicant must base the claim on at least one of the following reasons: (1) a court decree, (2) a consent from a trademark registration owner to applicant’s concurrent use and registration, or (3) prior use of the mark by applicant as compared to the application filing dates of other parties or users. TMEP §1207.04(c); see 15 U.S.C. §1052(d). If applicant asserts a proper concurrent use claim, the application will be subject to an administrative proceeding (similar to a court proceeding) before the USPTO Trademark Trial and Appeal Board to determine the geographical limitations on applicant’s and other parties’ use of the mark. See 37 C.F.R. §2.99(h); TMEP §1207.04(e).
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.
If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney. All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights. See TMEP §§705.02, 709.06.
RESPONSE GUIDELINES
For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
TRADEMARK COUNSEL SUGGESTED
Because of the legal technicalities and strict deadlines of the trademark application process, applicant may wish to hire a private attorney who specializes in trademark matters to assist in the process. The assigned trademark examining attorney can provide only limited assistance explaining the content of an Office action and the application process. USPTO staff cannot provide legal advice or statements about an applicant’s legal rights. TMEP §§705.02, 709.06. See Hiring a U.S.-licensed trademark attorney for more information.
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
Keri-Marie Cantone
Examing Attorney, Law Office 104
(571) 272-6069
Keri.Cantone@uspto.gov
RESPONSE GUIDANCE