Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Owner’s Trademark Registration

OFFICE ACTION

The USPTO must receive the owner’s response to this letter within the time period specified below.  Respond using the Trademark Electronic Application System (TEAS).  A link to the appropriate TEAS response form appears below.

Issue date:  November 26, 2019

The Section 7 Amendment submitted on September 3, 2019 is not accepted for the reasons set forth below.

I.                    Material Alteration/Amendment To The Mark

The proposed amendment to the mark would materially alter the character of the mark and thus cannot be accepted.  15 U.S.C. §1057(e); 37 C.F.R. §2.173(d).  A registered mark can be amended only if the change does not alter the character and commercial impression of the mark, i.e., the change creates essentially the same impression as the original mark.  In re Umax Data System, Inc., 40 USPQ2d 1539 (Comm’r Pats. 1996); TMEP §1609.02(a).

The owner seeks to amend the mark in the registration from an eyeball with light blue eye lids with the inside of the eye being white having a blue pupil with a white circle inside and having two short gray arms and two short gray legs to an eyeball with dark blue eye lids, the inside of the eye being white with a black pupil and a white circle inside the pupil and the eyeball having long blue arms and long legs that are blue. The proposed amendment would result in a mark with a different visual impression from that of the original mark, i.e., the two marks do not appear as essentially the same mark.  Accordingly, the Section 7 Amendment is not accepted.

II.                  Declaration and Signature

To verify the contents of the Section 7 Amendment, as well as any submitted corrections or further amendments, the owner may submit the following statement and declaration under 37 C.F.R. §2.20, properly signed and dated:

The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statement may jeopardize the validity of this document, declares that s/he is properly authorized to execute this document on behalf of the owner, and all statements made of his/her own knowledge are true and that all statements made on information and belief are believed to be true.

__________________________

Signature of Authorized Person

__________________________

Type or Print Name

__________________________

Date

III.                Signatures on Responses

Responses to Office actions must be properly signed.  TMEP §605.02.  If the owner has retained an attorney, the attorney must sign the response; the owner cannot sign the response.  Id.  However, if the owner was previously represented by an attorney, and the owner later retains a different attorney, the newly retained attorney cannot sign responses until a new power of attorney signed by the owner is filed.  TMEP §602.01.  Paralegals and secretaries cannot sign responses for attorneys.  See TMEP §602.03.

The only attorneys who can practice before the USPTO in trademark matters are (1) attorneys in good standing with a bar of the highest court of any U.S. state (including the District of Columbia, Puerto Rico and other federal territories and possessions) or (2) Canadian agents/attorneys reciprocally recognized by the USPTO’s Office of Enrollment and Discipline (OED) who are appointed in connection with a U.S.-licensed attorney.  See 37 C.F.R. 2.17(a), 11.14(a), (c), (e).  Foreign attorneys (other than recognized Canadian attorneys) cannot sign responses or otherwise represent registrants before the USPTO.  See 37 C.F.R. §11.14(c). 

If the owner is not represented by an attorney, the response must be signed by the owner or by someone with legal authority to bind the owner (i.e., a corporate officer of a corporate owner, the equivalent of an officer for unincorporated organizations or limited liability company owners, a general partner of a partnership owner, each owner for registrations with multiple individual owners, etc.).  TMEP §605.02. 

A non-attorney who is authorized to verify facts on behalf of an owner under 37 C.F.R. §2.33(a)(2) (such as trademark administrators, accountants, business managers, administrative assistants, and personal assistants) cannot sign responses to Office actions unless he or she also has legal authority to bind the owner.  See TMEP §§712.03 and 804.04.

IV.               Response Guidelines

The owner has six months from the issuance date of this letter to respond to all the issues raised in this letter.  In order to expedite the processing of your Section 7 Amendment, the early submission of a response to this letter is encouraged.  If a complete response is not received in the Office within this time period, then the Section 7 Amendment will be considered abandoned.  37 C.F.R. §2.176.  The fee for filing the Section 7 Amendment will not be refunded.

How to respond.  Click to file a Response to Post-Registration Office action. 

Direct questions about this Office action to the Post Registration staff member below.

      /Burns Jr, Glenn R/

    Trademark Specialist

    Phone: 571-272-0994

    Fax: 571-273-0994

   Glenn.Burns@USPTO.gov

RESPONSE GUIDANCE

• Response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS maintenance or unforeseen circumstances could affect an owner’s ability to timely respond.  

• Responses signed by an unauthorized party are not accepted or processed.  If the owner does not have an attorney, the response must be signed by the individual owner, all joint owners, or someone with legal authority to bind a juristic owner.  If the owner 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.