To: | TXS Industrial Design, Inc. (dallastrademarks@dfw.conleyrose.com) |
Subject: | U.S. Trademark Application Serial No. 88221519 - 4684-02500 |
Sent: | July 09, 2019 12:30:06 PM |
Sent As: | ecom108@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88221519
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Correspondence Address: 5601 GRANITE PARKWAY, SUITE 500
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Applicant: TXS Industrial Design, Inc.
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Reference/Docket No. 4684-02500
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) and/or Electronic System for Trademark Trials and Appeals (ESTTA). A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action.
Issue date: July 09, 2019
This Office action is in response to applicant’s communication filed on June 10, 2019.
In a previous Office action dated March 18, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following: Trademark Act Sections 1, 2, and 45 Refusal for a non-distinctive product design. In addition, Applicant was required to amend the drawing and mark description, provide information regarding the goods, and amend the identification of goods.
Based on applicant’s response, the trademark examining attorney notes that the following requirements have been satisfied: Applicant has provided the requested information regarding the goods and has acceptably amended the identification of goods. See TMEP §§713.02, 714.04.
The following refusal has also been obviated: Applicant has provided a sufficient Section 2(f) claim in response to the Sections 1, 2, and 45 Refusal. See TMEP §§713.02, 714.04.
However, the amended drawing contains an additional two dotted lines which are not accounted for in the mark description.
As a result, the trademark examining attorney maintains and now makes FINAL the refusal(s) and/or requirement(s) in the summary of issues below. See 37 C.F.R. §2.63(b); TMEP §714.04.
SUMMARY OF ISSUES MADE FINAL that applicant must address:
AMENDED DRAWING AND MARK DESCRIPTION REQUIRED
In this case, the amended drawing shows the design of the product with broken lines representing the knob, buttons, clock-face, and USB inputs. However, there are two additional vertical lines on the right side of the product which are not accounted for in this mark description. As a result, Applicant must either (1) delete these lines, or (2) describe what these lines represent and clarify whether they are or are not being claimed as part of the mark.
If the drawing of the mark includes additional matter not claimed as part of the mark (e.g., matter that shows the position or placement of the mark), applicant must depict such matter using broken or dotted lines. 37 C.F.R. §2.52(b)(4); Kohler Co. v. Honda Giken Kogyo K.K., 125 USPQ2d 1468, 1488 (TTAB 2017) (quoting In re Heatcon, Inc., 116 USPQ2d 1366, 1379 (TTAB 2015)); TMEP §§807.08, 1202.02(c)(i); see In re Water Gremlin Co., 605 F.2d 841, 844, 208 USPQ 89, 91 (C.C.P.A. 1980).
In addition to these drawing requirements, applicant must also submit a clear and concise description of the mark that does the following:
(1) Indicates the mark is a three-dimensional configuration of the goods or their packaging or of a specific design feature of the goods or packaging.
(2) Specifies all the elements in the drawing that constitute the mark and are claimed as part of the mark.
(3) Specifies any elements that are not part of the mark and indicates that the matter shown in broken or dotted lines is not part of the mark and serves only to show the position or placement of the mark.
See 37 C.F.R. §§2.37, 2.52(b)(2), (b)(4); In re Famous Foods, Inc., 217 USPQ 177, 177 (TTAB 1983); TMEP §§807.08, 807.10, 1202.02(c)(ii).
In this case, the description submitted with the application (1) refers to the mark as “product packaging” rather than product design, (2) describes matter not in the mark, and (3) does not specify all elements that are not part of the mark.
Should Applicant delete the broken lines from the drawing, the mark description as amended is accurate. If not, the following mark description format is suggested, if accurate:
The mark consists of a three-dimensional configuration of an alarm clock and integrated battery charger in a frutopyramidal shape. The broken lines depicting the knob, buttons, clock-face, USB inputs, and {describe what the vertical lines on the right side of the mark are depicting} are not part of the mark.
See TMEP §1202.02(c)(ii).
RESPONSE GUIDELINES
(1) a response filed using the Trademark Electronic Application System (TEAS) that fully satisfies all outstanding requirements and/or resolves all outstanding refusals; and/or
(2) an appeal to the Trademark Trial and Appeal Board filed using the Electronic System for Trademark Trials and Appeals (ESTTA) with the required filing fee of $200 per class.
37 C.F.R. §2.63(b)(1)-(2); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.
In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues. TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters). There is a fee required for filing a petition. 37 C.F.R. §2.6(a)(15).
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 final Office action and/or appeal it to the Trademark Trial and Appeal Board (TTAB).
Riso, Mark
/Mark Riso/
Mark Riso
Trademark Examining Attorney
Office 108
Phone (571)272-0167
mark.riso@uspto.gov
RESPONSE GUIDANCE