To: | Kernow Coatings Limited (mail@ipcounselors.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88231459 - COBALT - N/A |
Sent: | 3/19/2019 8:23:04 PM |
Sent As: | ECOM123@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 Attachment - 35 Attachment - 36 Attachment - 37 Attachment - 38 Attachment - 39 Attachment - 40 Attachment - 41 Attachment - 42 Attachment - 43 Attachment - 44 Attachment - 45 Attachment - 46 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88231459
MARK: COBALT
|
|
CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
|
APPLICANT: Kernow Coatings Limited
|
|
CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
|
OFFICE ACTION
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: 3/19/2019
SECTION 2(d) PARTIAL REFUSAL – LIKELIHOOD OF CONFUSION
The following chart lists the applied-for mark, the registered mark, the registration number, and the relevant goods/services:
Registration No. |
Mark |
Goods |
Applied-for |
COBALT |
Class 01: Printing chemicals; chemicals for use in printing
Class 016: Paper; paperboard; paper signs; adhesive paper
Class 017: Plastic films
Class 019: Signs, and information and advertising displays, non-metallic Class 024: Textile material; textile substitute materials made from synthetic materials; banners; plastic banners
Class 040: Printing services; finishing and coating of textiles and printed matter |
3141234 |
KOBALT |
Class 16: carpenters' pencils and pencil sharpeners; non-slip drawer liners of paper for tool chests and tool boxes |
5538700 |
COBALT BLUEPRINT stylized |
Class 035: Photocopying and document reproduction services; photocopying and reproducing of documents and blueprints for others; issuing and updating of advertising text, namely, proofing of documents, blueprints, signs, signage, promotional graphics, marketing materials, brochures and booklets; advertising services, namely, designing advertising materials for others; advertising services, namely, designing advertising materials for use by others to promote their goods and services; advertising services, namely, the design and production of content for outdoor advertising, signs, vinyl vehicle wraps and vinyl coverings for use by others to promote their goods and services Class 40: Printing and plotting services; printing and plotting services for others; treatment of materials, namely, laminating and mounting of documents, photographs, signs, signage, promotional graphics, banners and certificates; assembling of documents in the nature of bindery services for others, namely, collating, folding, stapling, perforating, cutting and binding of printed, photocopied and typewritten materials; photographic reproduction services; wide format printing services; wide format photograph printing services; plotting of documents and blueprints; digital printing of documents, blueprints, photographs and marketing materials; printing of documents, blueprints, marketing materials, photographs, signs, signage, promotional graphics, banners, certificates, outdoor advertisements, vinyl coverings and vinyl vehicle wraps; printing services, namely, printing of documents, blueprints, signs, signage, promotional graphics, marketing materials, brochures and booklets. |
Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties. See 15 U.S.C. §1052(d). Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”). In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017). Only those factors that are “relevant and of record” need be considered. M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018).
Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services. See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.
In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods and/or services, and similarity of the trade channels of the goods and/or services.
Similarity of the Marks
Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)); TMEP §1207.01(b).
When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.” Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b). The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks. In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (CCPA 1971)); TMEP §1207.01(b).
Here, the applicant's standard character mark COBALT is confusingly similar to the registrants' marks in the chart above as discussed further below.
The marks begin with or consist solely of the same or virtually the same wording COBALT and KOBALT, which is nearly identical in appearance and identical in sound, and overall commercial impression. Consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (finding similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876, 23 USPQ2d 1698, 1700 (Fed Cir. 1992) (finding similarity between CENTURY 21 and CENTURY LIFE OF AMERICA in part because “consumers must first notice th[e] identical lead word”); see also In re Detroit Athletic Co., 903 F.3d 1297, 1303, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”). Because COBALT and KOBALT is the first and/or only wording in the marks, consumers will focus on it for source identification, thereby making it the dominant feature of the marks. Greater weight is often given to this dominant feature when determining whether marks are confusingly similar. See In re Nat’l Data Corp., 753 F.2d at 1058, 224 USPQ at 751.
In this case, the mark in US Reg. No. 3141234 begins with a K, however, this difference does not avoid the similarity between the applied-for mark and registrant’s mark because these letters are phonetically identical. See http://www.ahdictionary.com/word/search.html?q=cobalt (showing that the C is pronounced like K in word “cobalt”). Accordingly, the marks are essentially phonetic equivalents and thus sound similar. Similarity in sound alone may be sufficient to support a finding that the marks are confusingly similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b)(iv).
Additionally, the mark in US Reg. No. 5538700 contains the additional wording BLUEPRINT. However, this addition is insufficient to obviate the similarities between the marks. Specifically, registrant has disclaimed this descriptive text. Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii). Disclaimed matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant when comparing marks. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). Thus, this wording is less significant in terms of affecting the mark's/marks' overall commercial impressions, and the wording COBALT remains the dominant element of the marks.
Moreover, while applicant’s mark is in standard characters and registrant’s mark in US Reg. No. 5538700 is in stylized or design text, this difference does not obviate the similarities between the marks. A mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition. See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii). Thus, applicant mark could be presented in stylized characters and/or with a design element identical to that of registrants.
For these reasons, when consumers encounter the parties' goods and/or services using marks with these similarities, they are likely to be confused as to the source of the goods and/or services. Therefore, the marks are confusingly similar.
Relatedness of the Goods and/or Services
In this case, the applicant uses broad wording to describe its goods/services in Class 16, which presumably encompasses all goods and/or services of the type described, including registrant’s more narrow goods/services identification in US Reg. No. 3141234. Additionally, the applicant uses broad wording to describe its goods/services in Class 40, which presumably encompasses all goods and/or services of the type described, including registrant’s more narrow goods/services identification in US Reg. No. 5538700. Moreover, the registration in US Reg. No 5538700 uses broad wording to describe its goods in Class 40, which presumably encompasses all goods and/or services of the type described, including applicant’s more narrow goods/services identification. See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). Thus, applicant’s and registrant’s goods are legally identical. See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).
Additionally, the goods and/or services of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.” In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). Thus, applicant’s and registrant’s goods and/or services are related.
Specifically, the undersigned attorney has also attached evidence from the Office's database of marks consisting of third-party marks registered for use in connection with the same or similar goods and/or services as those of the applicant and registrants. See U.S. Registration Nos. 4067694, 5573246, 5589304, 5604447, 5613682, and 5641698. This evidence further shows that the goods and/or services identified therein are of a kind that may emanate from the same source under a single mark. The trademark examining attorney has attached evidence from the USPTO’s X-Search database consisting of a number of third-party marks registered for use in connection with the same or similar goods and/or services as those of both applicant and registrant in this case. This evidence shows that the goods and/or services listed therein are of a kind that may emanate from a single source under a single mark. See In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018) (citing In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)); TMEP §1207.01(d)(iii).
Consequently, upon encountering applicant’s mark used in connection with applicant’s goods/services, and registrant’s mark used in connection with registrant’s goods/services, consumers are likely to be confused and mistakenly believe that the respective goods/services emanate from a common source.
Because the marks are confusingly similar and the goods/service are closely related, consumers are likely to be confused as to the source of the goods. Thus, registration is refused pursuant to Trademark Act Section 2(d).
POTENTIAL SECTION 2(d) REFUSAL – PRIOR PENDING APPLICATION
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
Although the applicant is not required to respond to the issue of the prior pending application(s), the applicant must respond to the above/below refusal(s)/requirement(s) within six months of the mailing date of this Office action to avoid abandonment.
Applicant should note the following additional ground for refusal.
SECTION 2(e)(1) PARTIAL REFUSAL - MERELY DESCRIPTIVE
Registration is partially refused as to Class 1 because the applied-for mark merely describes an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.
Here, the applicant has applied for the mark COBALT in relevant part for “printing chemicals; chemicals for use in printing”.
In this case, cobalt refers to a chemical often used for pigments and as a coloring agent. See attached evidence http://www.ahdictionary.com/word/search.html?q=cobalt and http://www.cobaltinstitute.org/inks-and-pigments.html. The attached evidence shows that cobalt is a chemical used in printing inks. See id.; see also http://www.sciencedirect.com/topics/pharmacology-toxicology-and-pharmaceutical-science/cobalt-compounds. Accordingly, in light of the preceding evidence, the applicant’s mark immediately conveys and merely describes a feature of the applicant’s goods, namely, applicant offers cobalt and/or cobalt compound chemicals used for printing.
For these reasons, when consumers encounter the applicant's goods and/or services under the mark COBALT, they are likely to immediately understand the mark as merely describing an ingredient, quality, characteristic, function, feature, purpose, or use of these goods and/or services, rather than as indicating the source of these goods and/or services. Thus, registration is refused pursuant to Trademark Act Section 2(e)(1).
RESPONSE TO REFUSAL(S)
Although the applicant's mark has been refused registration, the applicant may respond to the refusal(s) by submitting evidence and offering argument against the refusal(s) and in support of registration.
REQUIREMENTS
If the applicant responds to the refusals, then the applicant also must respond to the below requirements.
ADDITIONAL INFORMATION REQUIRED
Factual information about the goods must clearly indicate how they operate, their salient features, and their prospective customers and channels of trade. Factual information about the services must clearly indicate what the services are and how they are rendered, their salient features, and their prospective customers and channels of trade. Conclusory statements will not satisfy this requirement for information.
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. Merely stating that information about the goods or services is available on applicant’s website is an insufficient response and will not make the relevant information of record. See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).
IDENTIFICATION OF GOODS AND/OR SERVICES AMENDMENT REQUIRED
The wording in the identification of goods must be clarified because it is too broad and could include goods in other international classes as indicated in bold below. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. For example, the wording “adhesive paper” could encompass Non-medicated adhesive paper for removing ticks in Class 10 and adhesive note paper in Class 16.
Therefore, the applicant may adopt the following identification of goods and/or services, if accurate:
Class 01:
Printing chemicals, namely, { applicant must specify the nature of the chemicals in Class 1 e.g. printing paste and color enhancer for printing textiles, chemical products and synthetic resins used in the manufacture of printing ink, Cobalt oxides for industrial purposes}; chemicals for use in printing namely, { applicant must specify the nature of the chemicals in Class 1 e.g. printing paste and color enhancer for printing textiles, chemical products and synthetic resins used in the manufacture of printing ink, Cobalt oxides for industrial purposes}
Class 02:
Printing chemicals, namely, {applicant must specify the nature of the chemicals in Class 1 e.g. Cobalt oxide as colorant}
Class 10:
Non-medicated adhesive paper for removing ticks
Class 016:
Paper; paperboard; Printed paper signs; adhesive note paper; Plastic films for packaging
Class 017:
Tinted plastic film for use on windows
Class 019:
Signs, and information and advertising displays, non-metallic; {applicant must
specify the nature of the goods in Class 19 e.g. Non-luminous, non-mechanical signs not of metal; Non-luminous,
non-mechanical display signs not of metal; Non-luminous,
non-mechanical advertising signs}
Class 024:
Textile material {applicant must specify the nature of the goods in Class 24
e.g. Textile fabrics for use in making clothing and household furnishings; Woven fabrics of {specify material, e.g., nylon,
cotton, basalt, etc.} for textile use}; textile substitute materials made from synthetic materials; cloth banners;
plastic banners
Class 040:
Printing services; finishing and coating of textiles; and printed matter finishing and coating of paper
Applicant should note that the bolded language above is to indicate the examining attorney's suggestions, and the braces indicate where applicant must insert specific types of goods/services. The amended identification should only include the specific goods/services indicated, as inserted by applicant, it should not include the braces or instructional language. Applicant need not amend its identification other than where specified by bold font.
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. See TMEP §1402.04.
CLARIFICATION OF THE NUMBER OF CLASSES FOR WHICH REGISTRATION IS SOUGHT REQUIRED
The applicant has identified goods and/or services that could be classified in at least 8 classes. However, the applicant submitted a fee sufficient for only 6 classes. Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
MULTIPLE-CLASS APPLICATION REQUIREMENTS ADVISORY
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule). The application identifies goods and/or services that are classified in at least 8 classes; however, applicant submitted a fee(s) sufficient for only 6 class(es). Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class. See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a). See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.
See an overview of the requirements for a Section 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
APPLICATION NOT SIGNED
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 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; and that the facts set forth in the application are true. 37 C.F.R. §§2.33(b)(2), (c), 2.34(a)(2), (a)(3)(i), (a)(4)(ii). For more information about this, see the Verified statement webpage.
To provide these verified statements. After opening the correct TEAS response form, answer “yes” to wizard question #10, and follow the instructions within the form for signing. In this case, the form will require two signatures: one in the “Declaration Signature” section and one in the “Response Signature” section.
FOREIGN CERTIFICATE REQUIRED
A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in the applicant’s country of origin. TMEP §1004.01. If an applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, the applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to the applicant’s country of origin. TMEP §1016.
Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin. If the foreign registration is not written in English, applicant must also provide an English translation. 37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b). The translation should be signed by the translator. TMEP §1004.01(b).
RESPONSE GUIDELINES
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.
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.
/Karen S. Derby/
Karen S. Derby
Examining Attorney
U.S. Patent and Trademark Office
Law Office 123
Karen.Derby@uspto.gov
571.270.7070
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.