To: | Meisenhelter, Christine (mistinemusic@gmail.com) |
Subject: | U.S. Trademark Application Serial No. 88231489 - MISTINE - N/A |
Sent: | October 07, 2019 02:41:44 PM |
Sent As: | ecom104@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88231489
Mark: MISTINE
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Correspondence Address:
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Applicant: Meisenhelter, Christine
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Reference/Docket No. N/A
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). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: October 07, 2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
DRAWING AMENDMENT NOT ACCEPTED – MATERIAL ALTERATION – ORIGINAL DRAWING REMAINS OPERATIVE
The original drawing shows the mark as “[m]ultiple stars inside one another outlined in the color light turquoise surrounding the term ‘MISTINE’ which appears in the color pink and is outlined in the color light blue”. The proposed amended drawing shows the mark as MISTINE in standard characters.
The USPTO cannot accept an amendment to a mark if it will materially alter the mark in the drawing filed with the original application, or in a previously accepted amended drawing. 37 C.F.R. §2.72(a)(2), (b)(2); TMEP §807.14. An amendment to the mark is material when the USPTO would need to republish the mark with the change in the USPTO Trademark Official Gazette to fairly present the mark to the public. In re Thrifty, Inc., 274 F.3d 1349, 1352, 61 USPQ2d 1121, 1123-24 (Fed. Cir. 2001) (citing In re Hacot-Columbier, 105 F.3d 616, 620, 41 USPQ2d 1523, 1526 (Fed. Cir. 1997)); TMEP §807.14.
That is, an amendment is material if the altered mark does not retain “the essence of the original mark” or if the new and old forms do not “create the impression of being essentially the same mark.” In re Hacot-Columbier, 105 F.3d at 620, 41 USPQ2d at 1526 (quoting Visa Int’l Serv. Ass’n v. Life-Code Sys., Inc., 220 USPQ 740, 743-44 (TTAB 1983)); see, e.g., In re Who? Vision Sys., Inc., 57 USPQ2d 1211, 1218 (TTAB 2000) (amendment from “TACILESENSE” to “TACTILESENSE” a material alteration); In re CTB Inc., 52 USPQ2d 1471, 1475 (TTAB 1999) (amendment of TURBO with a design to just the typed word TURBO without design a material alteration).
When determining materiality, the addition of any element that would require a further search of the USPTO database for conflicting marks is also relevant. In re Guitar Straps Online LLC, 103 USPQ2d 1745, 1747 (TTAB 2012) (citing In re Pierce Foods Corp., 230 USPQ 307, 308-09 (TTAB 1986)); In re Who? Vision Sys. Inc., 57 USPQ2d at 1218-19; TMEP §807.14.
In the present case, applicant’s proposed amendment would materially alter the mark in the drawing filed with the original application or as previously amended because it deletes the multiple star design feature.
To avoid the application from abandoning, applicant must respond to this issue. TMEP §807.17. Applicant may respond by (1) withdrawing the request to amend the drawing, or (2) arguing that the proposed amendment is not a material alteration of the mark.
For more information about changes to the mark in the drawing after the application filing date, please go to the Drawing webpage.
CONTINUED - MARK ON THE DRAWING AND SPECIMEN DIFFER
The refusal to register is CONTINUED because the specimen does not show the mark in the drawing in use in commerce in International Class 9, which is required in the application or amendment to allege use. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a), 1301.04(g)(i). The mark appearing on the specimen and in the drawing must match; that is, the mark in the drawing “must be a substantially exact representation of the mark” on the specimen. See 37 C.F.R. §2.51(a)-(b); TMEP §807.12(a).
In this case, the specimen displays the mark as MISTINE in black stylized letting. However, the drawing displays the mark as multiple stars inside one another outlined in the color light turquoise surrounding the term “MISTINE” which appears in the color pink and is outlined in the color light blue. The mark on the specimen does not match the mark in the drawing because it does not contain the stars, and the lettering stylization and colors are different. Applicant has thus failed to provide the required evidence of use of the mark in commerce. See TMEP §807.12(a).
Applicant may respond to this refusal by satisfying one of the following:
(1) Submit a different specimen (a verified “substitute” specimen) for each applicable international class that (a) shows the mark in the drawing in actual use in commerce for the goods and/or services in the application or amendment to allege use, and (b) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use.
Examples of specimens for goods include tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, and displays associated with the actual goods at their point of sale. See TMEP §§904.03 et seq. Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods. TMEP §904.03(i). Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and webpages that show the mark used in the actual sale, rendering, or advertising of the services. See TMEP §1301.04(a), (h)(iv)(C).
(2) Submit a request to amend the filing basis to intent to use under Section 1(b), for which no specimen is required. This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.
The USPTO will not accept an amended drawing submitted in response to this refusal because the changes would materially alter the drawing of the mark in the original application or as previously acceptably amended. See 37 C.F.R. §2.72(a)-(b); TMEP §807.14. Specifically, amending the mark on the drawing to agree with the mark on the specimen would be a material alteration because it would delete the design of multiple stars which is a material element in the drawing.
For more information about drawings and instructions on how to satisfy these response options online using the Trademark Electronic Application System (TEAS) form, see the Drawing webpage.
CONTINUED - COLOR CLAIM AND DESCRIPTION INCOMPLETE
This requirement is CONTINUED.
Applicant must amend the color claim and description to identify all the colors in the drawing of the mark. See 37 C.F.R. §2.52(b)(1); TMEP §807.07(a)-(a)(ii). The following colors have been omitted from the color claim: light turquoise. In addition, the following colors have been omitted from the description: light turquoise and white.
A complete color claim must reference all the colors appearing in the drawing of the mark. See 37 C.F.R. §2.52(b)(1); TMEP §§807.07(a) et seq. Similarly, a complete description of a mark depicted in color must specify where the colors appear in the literal and design elements of the mark. See 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §§807.07(a) et seq. If black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark, applicant must so specify in the description. See TMEP §807.07(d).
The following color claim and description are suggested, if accurate:
Color claim: “The colors pink, light blue, and light turquoise are claimed as a feature of the mark.”
Description: “The mark consists of the following: Multiple stars inside one another outlined in the color light turquoise surrounding the term “MISTINE” which appears in the color pink and is outlined in the color light blue. The color white represents transparent background areas and is not a part of the mark.”
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.
How to respond. Click to file a response to this nonfinal Office action
/Carol Spils/
Trademark Examining Attorney
Law Office 104
(571)272-9226
carol.spils@uspto.gov
RESPONSE GUIDANCE