Reconsideration Letter

United States Patent and Trademark Office (USPTO)

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

 

 

 

REQUEST FOR RECONSIDERATION

AFTER FINAL ACTION

DENIED

 

 

Issue date:  January 09, 2020

 

 

Applicant’s request for reconsideration is denied.  See 37 C.F.R. §2.63(b)(3).  The trademark examining attorney has carefully reviewed applicant’s request and determined the request did not:  (1) raise a new issue, (2) resolve all the outstanding issue(s), (3) provide any new or compelling evidence with regard to the outstanding issue(s), or (4) present analysis and arguments that were persuasive or shed new light on the outstanding issue(s).  TMEP §§715.03(a)(ii)(B), 715.04(a). 

 

Accordingly, the following requirement(s) and/or refusal(s) made final in the Office action dated 5/23/2019 are maintained and continued: 

 

            •  Request To Change Applicant Name – No Assignment Recorded

 

REQUEST TO CHANGE APPLICANT NAME – NO ASSIGNMENT RECORDED

           

Applicant has requested that the applicant name in the application be amended; however, applicant has not provided or recorded in the USPTO database ownership transfer documentation or any other documentation showing transfer of title.  Therefore, the request to amend the applicant name is denied until applicant establishes clear chain of title to the new party.  37 C.F.R. §2.61(b); TMEP §814. 

 

If the application was filed by the owner and the original applicant has since changed its name or transferred ownership of the mark to another entity, the new owner must file documentation to establish its current ownership of the application by satisfying one of the following:

 

(1)        The new owner must (a) record an assignment, name change, or other documentation affecting title with the USPTO’s Assignment Recordation Branch showing a clear chain of title to the mark in the new owner; and (b) promptly notify the trademark examining attorney that the documentation has been recorded.; OR

 

(2)        The new owner must file either (a) a written statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20, explaining in detail the chain of title to the new owner; or (b) documentation showing transfer of title to the new owner.  However, the registration will not issue in the name of the new owner without recording chain of title documentation with the USPTO and notifying the trademark examining attorney, as specified in (1) above.

 

TMEP §502.01; see 15 U.S.C. §1060; 37 C.F.R. §§2.193(e)(1), 3.73(b)(1); TMEP §502.02(a).

 

Assignments and other documents affecting title may be filed electronically.  There is a fee for recording ownership changes.  37 C.F.R. §§2.6(b)(6), 3.41(a); TMEP §503.03(d).  Recording an assignment or other ownership transfer document does not constitute a response to an Office action.  TMEP §503.01(d).  Applicant must still file a separate response to this Office action.  See id.

 

Applicant’s Arguments

In its responses applicant has repeatedly argued that the company was mistakenly referred to as CALI HOLDINGS, LLC, instead of CALI HOLDINGZ, INC. This is more than a clerical error, and therefore cannot be changed with the affidavit of good faith. However, TMEP 1201.02(c)(3) specifically states Minor clerical errors such as the mistaken addition or omission of "The" or "Inc." in the applicant’s name may be corrected by amendment, as long as this does not result in a change of entity. In this case, applicant would change the entity designation from LLC to Corporation. Therefore, the entity cannot be changed on the basis of a minor clerical error.

 

If the party listed as the applicant did not exist on the application filing date, the application may be amended to correct the applicant’s name. See Accu Pers. Inc. v. Accustaff Inc., 38 USPQ2d 1443 (TTAB 1996) (holding application not void ab initio where corporation named as applicant technically did not exist on filing date, since four companies who later merged acted as a single commercial enterprise when filing the application); Argo & Co. v. Springer, 198 USPQ 626, 635 (TTAB 1978) (holding that application may be amended to name three individuals as joint applicants in place of an originally named corporate applicant which was never legally incorporated, because the individuals and non-existent corporation were found to be the same, single commercial enterprise); Pioneer Elec., 183 USPQ 613 (holding that applicant’s name may be corrected where the application was mistakenly filed in the name of a fictitious and non-existent party).

 

If the owner of a mark legally changed its name before filing an application, but mistakenly lists its former name on the application, the error may be corrected, because the correct party filed, but merely identified itself incorrectly. In re Techsonic Indus., Inc., 216 USPQ 619 (TTAB 1982).

 

See TMEP §§715.03(a)(ii)(B), 715.04(a). 

 

If applicant has already filed an appeal with the Trademark Trial and Appeal Board, the Board will be notified to resume the appeal.  See TMEP §715.04(a).

 

If applicant has not filed an appeal and time remains in the six-month response period, applicant has the remainder of that time to (1) file another request for reconsideration that complies with and/or overcomes any outstanding final requirement(s) and/or refusal(s), and/or (2) file a notice of appeal to the Board.  TMEP §715.03(a)(ii)(B).  Filing a request for reconsideration does not stay or extend the time for filing an appeal.  37 C.F.R. §2.63(b)(3); see TMEP §715.03(c). 

 

 

/Alexander Mangubat/

Alexander Mangubat

Examining Attorney

Law Office 121

(571)270-3561

Alexander.Mangubat@uspto.gov

 

 

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on January 09, 2020 for

U.S. Trademark Application Serial No. 88223659

 

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. 

 

 

/Alexander Mangubat/

Alexander Mangubat

Examining Attorney

Law Office 121

(571)270-3561

Alexander.Mangubat@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 January 09, 2020, 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.”