UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.  A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.

 

ISSUE/MAILING DATE: 3/14/2019

 

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. 

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the below issue(s).  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

SEARCH OF OFFICE’S DATABASE OF MARKS:  The USPTO’s database of registered and pending marks has been searched and no conflicting marks were found that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).

 

SUMMARY OF ISSUES APPLICANT MUST ADDRESS:

 

·       AMENDED DESCRIPTION OF THE MARK REQUIRED

·       FILING BASIS REQUIRED

·       UNSIGNED APPLICATION

·       APPLICATION IDENTIFIES BOTH A SERVICE MARK AND A COLLECTIVE MEMBERSHIP MARK - CLARIFICATION IS REQUIRED AS BOTH CANNOT BE INCLUDED IN THE SAME APPLICATION

 

AMENDED DESCRIPTION OF THE MARK REQUIRED

 

Applicant must provide an amended description of the mark that describes both the literal and design elements in the mark and which also describes where the claimed color of orange appears in the literal and design elements.  Specifically, the current description of “The mark consists of the letters IA and a miscellaneous design” fails to adequately describe the design element in the mark and also fails to specify where the color orange appears in the mark.

 

A complete description must identify all the literal and design elements in the mark and specify where the colors appear in the elements.  See 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §§807.07(a) et seq. 

 

Further, if white is not being claimed as a color feature of the mark, applicant must include at the end of the mark description a statement that “The color white represents background and/or transparent areas and is not part of the mark.”  TMEP §807.07(d). 

 

The following description is suggested, if accurate:

 

The mark consists of the orange letters “AI” surrounded by an orange circular design with an open middle that is solid orange near the inner circumference of the circle and which breaks into small orange dots at the outer circumference of the circle.  The color white represents background and/or transparent areas and is not part of the mark.

 

FILING BASIS REQUIRED

 

Applicant has not specified a filing basis in the application.  An application must specify and meet the requirements of at least one filing basis.  37 C.F.R. §§2.32(a)(5), 2.34(a); TMEP §806.  Accordingly, applicant must (1) amend the application to specify clearly at least one filing basis, and (2) satisfy all the requirements for the basis or bases asserted. 

 

An applicant may add one or more of the following four bases to an application after filing:

 

(1)       Use of the mark in commerce under Trademark Act Section 1(a);

 

(2)       A bona fide intention to use the mark in commerce under Section 1(b);

 

(3)       A foreign registration of the same mark for the same goods and/or services in an applicant’s country of origin, under Section 44(e); and/or

 

(4)       A claim of priority based on an earlier-filed foreign application of the same mark for the same goods and/or services, which is filed within six months after the filing date of the foreign application, under Section 44(d).

 

Although an applicant may assert more than one basis, an applicant may not assert both Section 1(a) for use and Section 1(b) for intent to use for identical goods and/or services.  37 C.F.R. §2.34(b); TMEP §806.02(b).

 

For more information about the different legal requirements for each basis, for submitting more than one basis, and for instructions on how to satisfy these requirements online using the Trademark Electronic Application System (TEAS) form, please go to the Basis webpage.

 

UNSIGNED APPLICATION

 

The application was unsigned, resulting in the application not being properly verified.  See TMEP §804.  Applicant must properly sign and therefore verify the application in an affidavit or signed declaration under 37 C.F.R. §2.20.  See 37 C.F.R. §§2.2(n), 2.33(a)-(c), 2.34(a)(1)(i), (a)(2), (a)(3)(i), (a)(4)(ii); TMEP §804.02. 

 

The following statements must be verified:  That applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; that applicant believes applicant is entitled to use the mark in commerce on or in connection with the goods or services specified in the application; that applicant believes applicant is the owner of the mark; that the mark is in use in commerce and was in use in commerce as of the application filing date; that to the best of the signatory’s knowledge and belief, no other persons, except, if applicable, concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services of such other persons, to cause confusion or mistake, or to deceive; that the specimen shows the mark as used on or in connection with the goods or services as of the application filing date; and that the facts set forth in the application are true.  37 C.F.R. §§2.33(b), (c), 2.34(a)(1)(i), (a)(2), (a)(3)(i), (a)(4)(ii), 2.59(a).  For more information about this, see the Verified statement webpage.

 

To provide these verified statements.  After opening the response form Response to Examining Attorney Office Action Form, answer “yes” to question #10, and follow the instructions within the form for signing.  In this case, the TEAS online form will require two signatures:  one in the “Declaration Signature” section and one in the “Response Signature” section.

 

APPLICATION IDENTIFIES BOTH A SERVICE MARK AND A COLLECTIVE MEMBERSHIP MARK – CLARIFICATION IS REQUIRED AS BOTH CANNOT BE INCLUDED IN THE SAME APPLICATION

 

Applicant has submitted the following identification, which contains misclassified wording:

 

“Association services, namely, promoting the general interests of the internet industry and its global community of users; lobbying services, namely, promoting the interests of the internet industry and its global community of users; indicating membership in an organization consisting of members of the internet industry” in International Class 35.

 

Specifically, although applicant classified the entire identification in International Class 35, only the wording “Association services, namely, promoting the general interests of the internet industry and its global community of users; lobbying services, namely, promoting the interests of the internet industry and its global community of users” is properly classified in International Class 35. 

 

The remaining wording of “indicating membership in an organization consisting of members of the internet industry” is an identification for a collective membership mark that is properly classified in International Class 200.

 

For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual (“ID Manual”).  See TMEP §1402.04.

 

A “collective membership mark” is different from a service mark in that it is used by the members of a particular organization to signify that they are members of that organization.  15 U.S.C. §1127; TMEP §§1304.01.  Membership marks are not trademarks or service marks in the ordinary sense; they are not used in business or trade, and they do not indicate commercial origin of goods or services.  TMEP §1304.01. 

 

Therefore, the same application/registration cannot contain both goods/services and a collective membership identification.

 

Applicant can rectify this situation in one of the following ways:

 

(1)  Delete the wording “indicating membership in an organization consisting of members of the internet industry” from this application;

 

(2)  Delete the wording “Association services, namely, promoting the general interests of the internet industry and its global community of users; lobbying services, namely, promoting the interests of the internet industry and its global community of users” from this application, retaining only the wording “indicating membership in an organization consisting of members of the internet industry,” and amend the application from a service mark application to a collective membership mark application by completing and submitting the form entitled “COLLECTIVE MEMBERSHIP MARK SUBSTITUTE APPLICATION” provided below. A new filing fee is not required if applicant chooses this option.

 

Or:

 

(3)  File a request to divide, which would create two separate applications, one being a service mark application for the services “Association services, namely, promoting the general interests of the internet industry and its global community of users; lobbying services, namely, promoting the interests of the internet industry and its global community of users,” and the other being a collective membership mark application for the identification “indicating membership in an organization consisting of members of the internet industry.”  Instructions on filing a request to divide are provided below.  In addition to filing a request to divide, applicant must also complete and submit the form “COLLECTIVE MEMBERSHIP MARK SUBSTITUTE APPLICATION” provided below, so that one of the two applications is correctly converted to a Collective Membership Mark. A new filing fee will be required if applicant chooses this option, as well as the $100 fee for dividing an application.

 

 

Whole Form Correction to Amend Application to a Collective Membership Mark

 

If applicant chooses to respond by following options (2) or (3) above, then please complete and return the following “COLLECTIVE MEMBERSHIP MARK SUBSTITUTE APPLICATION” to create a collective membership mark application for the identification “indicating membership in an organization consisting of members of the internet industry” in International Class 200.  See 37 C.F.R. §2.44(a); TMEP §1304.02. 

 

COLLECTIVE MEMBERSHIP MARK SUBSTITUTE APPLICATION PURSUANT TO 15 U.S.C. §1054 – PRINCIPAL REGISTER

 

U.S. Class 200 under 37 C.F.R. §6.4

 

Applicant must complete Sections 1-6 below and then sign and date the declaration below:

 

(1)  U.S. Application Serial Number:

 

 

(2)  Applicant’s Name:

 

 

(3)  Applicant’s Mailing Address:

 

 

 

 

(4)  Applicant’s Entity Type:  (Check one and supply requested information.)

 

____    Individual – Citizen of (country):

 

____    Partnership – U.S. state (country, if appropriate) where organized:

 

If U.S. partnership, list all general partners by name, specify their legal entity type, and specify their national citizenship or state or country of organization or incorporation:

 

 

____    Corporation – U.S. state (country, if appropriate) of incorporation:

 

 

____    Other (specify nature of entity and domicile, e.g., unincorporated association organized under the laws of New York):

 

 

(5)  SPECIFY THE TYPE OR NATURE OF APPLICANT’S ORGANIZATION – Applicant must provide a description of the nature of the membership organization such as by type, purpose, or area of activity of the members, e.g., a social club, labor union, political party, association of real estate brokers.

 

“To indicate membership in an organization consisting of members of the internet industry” in International Class 200.

 

 (6)  BASIS FOR APPLICATION:  (Check basis or bases which apply, but do not check both the first and second bases (A & B below) for the same goods or services; and supply requested information related to each basis.)

 

A  ____  Trademark Act Section 1(a) – Mark Is in Actual Use in Commerce

 

Applicant believes the applicant is the owner of the mark.  The mark is in use in commerce and was in use in commerce as of the application filing date.  Applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the application filing date.

 

A specimen showing how a member uses the mark in commerce is submitted with this application.  This specimen shows the mark as used in commerce as of the application filing date.

 

Specify Date of First Use Anywhere by Applicant’s Members:

 

Specify Date of First Use in Commerce by Applicant’s Members:

 

Nature of Control of Mark:  A collective membership mark is used by the members, and applicant must specify how it controls use of the mark by the members.  If applicant’s bylaws or other written provisions specify the manner of control, then applicant should include a statement that “applicant’s bylaws and other written provisions specify the manner of control of the mark.”  (Specify nature of control immediately below.)

 

 

  

 

 

B  ____  Trademark Act Section 1(b) – Intent to Use Mark in Commerce

 

Applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce, and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date.

 

C  ____  Trademark Act Section 44(d) – Prior-filed Foreign Application

 

Applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce, and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date.

 

Specify Country of Foreign Filing:

 

Specify Foreign Application Serial Number:

 

Specify Date Foreign Application Filed:

 

D  ____  Trademark Act Section 44(e) – Prior-filed Foreign Registration

 

Applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce, and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date.

 

Specify Country of Foreign Registration:

 

Specify Foreign Registration Number:

 

Specify Registration Date:

 

 

DECLARATION:  Applicant must submit the declaration immediately below, properly signed and dated.  Submitting a declaration online using the Trademark Electronic Application System (TEAS) response form will satisfy this requirement.

 

The signatory believes that:  if the applicant is filing the application under 15 U.S.C. §1051(a), the applicant believes the applicant is the owner of the mark; the mark is in use in commerce and was in use in commerce as of the application filing date; the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the application filing date; the original specimen(s), if applicable, shows the mark as used in commerce by the applicant’s members as of the application filing date; and/or if the applicant is filing an application under 15 U.S.C. §1051(b), §1126(d), and/or §1126(e), the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce, and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date.  The signatory believes that to the best of the signatory’s knowledge and belief, no other persons, except members, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used in connection with the collective membership organization of such other persons, to cause confusion or mistake, or to deceive.  The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements and the like may jeopardize the validity of the application or any registration resulting therefrom, declares that all statements made of his or her own knowledge are true and all statements made on information and belief are believed to be true. 

 

_____________________________________________________

(Signature)

 

_____________________________________________________

(Print or Type Name and Position)

 

_____________________________________________________

(Date)

 

 

 

 

Information on Filing a Request to Divide

 

As explained in option (3) above, applicant may choose to respond by dividing the application into two separate applications by filing a request to divide. Dividing the application would create two applications, one being a service mark application for the services “association services, namely, promoting the general interests of the internet industry and its global community of users; lobbying services, namely, promoting the interests of the internet industry and its global community of users” in International Class 35, and the other being a collective membership mark application for the identification “indicating membership in an organization consisting of members of the internet industry” in International Class 200.  See 37 C.F.R. §2.87; TMEP §1110 et seq. 

 

To divide an application, file a request to divide online using the Trademark Electronic Application System (TEAS) form and include a fee of $100 for each new application created.  See 37 C.F.R. §§2.6(a)(19)(ii), 2.87(b); TMEP §1110.04.  An additional application filing fee will also be required in this case since applicant will have two different international classes in the separate application created by the division.  37 C.F.R. §§2.6(a)(1)(i)-(iii), 2.87(b); TMEP §1110.02.

 

In addition to filing a request to divide, applicant must also submit in response to this Office Action the “COLLECTIVE MEMBERSHIP MARK SUBSTITUTE APPLICATION” provided above. Filing this form is necessary to convert the application for the identification of “indicating membership in an organization consisting of members of the internet industry” into a Collective Membership Mark application.

 

 

RESPONSE GUIDELINES:  Applicant should file a response online using the Response to Examining Attorney Office Action Form available at http://www.gov.uspto.report/trademarks-application-process/filing-online/response-forms. 

 

If applicant requires technical assistance in using the online response form, please email TEAS@uspto.gov.

 

 

 

/Kristin Carlson/

Trademark Examiner, LO 105

571-272-2240

kristin.carlson@uspto.gov

800-786-9199 (Trademark Assistance Center)

 

TO RESPOND TO THIS LETTER:  Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application.  For technical assistance with online forms, e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned trademark examining attorney.  E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

 

All informal e-mail communications relevant to this application will be placed in the official application record.

 

WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants).  If an applicant is represented by an attorney, the attorney must sign the response. 

 

PERIODICALLY CHECK THE STATUS OF THE APPLICATION:  To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/.  Please keep a copy of the TSDR status screen.  If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199.  For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

 

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 3/14/2019 FOR U.S. APPLICATION SERIAL NO. 88226218

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 3/14/2019 (or sooner if specified in the Office action).  A response transmitted through the Trademark Electronic Application System (TEAS) must be received before midnight Eastern Time of the last day of the response period.  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the TEAS response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.