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: 6/4/2019

 

INTRODUCTION

 

This Office action is supplemental to the previous Office actions issued on March 20, 2019 and April 25, 2019 in connection with this application.  Based on information and/or documentation in applicant’s responses, the trademark examining attorney now issues the following new refusal:  Supplemental Register.  In addition, the trademark examining attorney reissues and adds additional information to the following requirement: Request for Information-Concurrent Use Claim.  See TMEP §§706, 711.02. 

 

In a previous Office action dated March 20, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following:  Refusal of Registration on Supplemental Register.   Applicant responded to that refusal by seeking registration on the Principal Register.  As such, the Refusal of Registration on the Supplemental Register was obviated and noted as such in the trademark examining attorney’s April 25, 2019 Office Action.  However, in applicant’s May 13, 2019 response, applicant has again sought registration of the mark on the Supplemental Register.  As such, the trademark examining attorney must issue a refusal of registration based on the Supplemental Register.

 

In addition, in a previous Office action dated April 25, 2019, the trademark examining attorney required applicant to satisfy the following requirement:  Request for Information –Concurrent Use Claim.  Applicant responded by adding “1(a)” next to the concurrent use claim.    As such, the trademark examining attorney maintains and continues the Request for Information-Concurrent Use Claim and adds additional information for this Request for Information-Concurrent Use Claim.

 

The following is a SUMMARY OF ISSUES that applicant must address:

 

            •  NEW ISSUE:  Supplemental Register

            •  ISSUE:  Request for Information-Concurrent Use Claim

 

Applicant must respond to all issues raised in this Office action and the previous April 25, 2019 Office action, within six (6) months of the date of issuance of this Office action.  37 C.F.R. §2.62(a); see TMEP §711.02.  If applicant does not respond within this time limit, the application will be abandoned.  37 C.F.R. §2.65(a).

 

SUPPLEMENTAL REGISTER

 

Registration on the Supplemental Register is refused because applicant’s mark is eligible for registration on the Principal Register.  TMEP §815.01; see 15 U.S.C. §1091(a).  Applicant has sought registration of the applied-for mark on the Supplemental Register.  See 15 U.S.C. §1091.  However, applicant’s mark is eligible for registration on the Principal Register because it comprises or includes inherently distinctive matter.  See TMEP §1212.

 

A mark that is eligible for registration on the Principal Register may not be registered on the Supplemental Register.  Nazon v. Ghiorse, 119 USPQ2d 1178, 1182 (TTAB 2016); TMEP §815.01.  Accordingly, applicant must amend the application to seek registration on the Principal Register. 

 

If applicant responds to the refusal, applicant must also respond to the requirement set forth below.

 

REQUEST FOR INFORMATION-CONCURRENT USE CLAIM

 

Applicant claimed concurrent use in the Responses to Office Action without stating the reason or basis for this claim; thus, it is unclear whether applicant intended to submit this claim.  In Applicant’s Response to Office Action dated March 23, 2019 applicant only provided the wording “amazon” next to the concurrent use claim.  However, in applicant’s May 13, 2019 Response to Office Action, applicant only provided “1(a)” next to the concurrent use claim.  As such, it is unclear whether applicant intended to submit this concurrent use claim. Accordingly, applicant must clarify whether he or she inadvertently included the concurrent use claim in the application.  See 37 C.F.R. §2.61(b); TMEP §814.  A concurrent use claim is asserted by applicants who want to restrict the use of their mark to a limited geographic area only (instead of use for the entire country), and must identify other parties who are using the same mark in different geographic areas.    

 

Applicant may respond to this issue by either (1) requesting that the concurrent use claim be deleted from the application or (2) keeping the claim and providing the legal basis for it, as explained in the following paragraph.  See TMEP §1207.04(c)-(d)(i). 

 

To claim concurrent use in an application, applicant must base the claim on at least one of the following reasons:  (1) a court decree, (2) a consent from a trademark registration owner to applicant’s concurrent use and registration, or (3) prior use of the mark by applicant as compared to the application filing dates of other parties or users.  TMEP §1207.04(c); see 15 U.S.C. §1052(d).  If applicant asserts a proper concurrent use claim, the application will be subject to an administrative proceeding (similar to a court proceeding) before the USPTO Trademark Trial and Appeal Board to determine the geographical limitations on applicant’s and other parties’ use of the mark.  See 37 C.F.R. §2.99(h); TMEP §1207.04(e). 

 

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. 

 

RESPONSE GUIDELINES

 

Response guidelines.  For this application to proceed further, 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.

 

In addition, because applicant filed a TEAS RF application, applicant must respond online using the Trademark Electronic Application System (TEAS) to avoid incurring an additional fee.  See 37 C.F.R. §2.23(b)(1), (c). 

 

ASSISTANCE:  Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

TRADEMARK COUNSEL SUGGESTED:  Because of the legal technicalities and strict deadlines involved in the USPTO application process, applicant may wish to hire a qualified U.S. attorney specializing in trademark matters to represent applicant in this process and provide legal advice.  Although the undersigned trademark examining attorney is permitted to help an applicant understand the contents of an Office action as well as the application process in general, no USPTO attorney or staff is permitted to give an applicant legal advice or statements about an applicant’s legal rights.  TMEP §§705.02, 709.06. 

 

For attorney referral information, applicant may consult the American Bar Association’s Consumers’ Guide to Legal Help or an online directory of legal professionals, such as FindLaw®.  The USPTO, however, may not assist an applicant in the selection of a private attorney.  37 C.F.R. §2.11.

 

Please note that foreign attorneys, other than duly authorized Canadian attorneys, are not permitted to represent applicants before the USPTO.  See 37 C.F.R. §§2.17(e), 11.14(c), (e); TMEP §602.03-.03(c).  The only attorneys who may 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, the District of Columbia, Puerto Rico, and other U.S. commonwealths/territories; and (2) duly authorized Canadian agents/attorneys.  See 37 C.F.R. §§2.17(e), 11.14(a), (c); TMEP §602.

 

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.  

 

 

 

/Rupali Shah/

Rupali Shah

Trademark Examining Attorney

Law Office 125

(571) 272-2871

rupali.shah@uspto.gov

 

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 6/4/2019 FOR U.S. APPLICATION SERIAL NO. 88234498

 

Your trademark application has been reviewed.  The trademark examining attorney assigned by the USPTO to your application has written an official letter to which you must respond.  Please follow these steps:

 

(1)  Read the LETTER by clicking on this link or going to http://tsdr.gov.uspto.report/, entering your U.S. application serial number, and clicking 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)  Respond within 6 months (or sooner if specified in the Office action), calculated from 6/4/2019, using the Trademark Electronic Application System (TEAS) response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  A response transmitted through TEAS must be received before midnight Eastern Time of the last day of the response period.

 

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. 

 

(3)  Questions about the contents of the Office action itself should be directed to the trademark examining attorney who reviewed your application, identified below. 

 

/Rupali Shah/

Rupali Shah

Trademark Examining Attorney

Law Office 125

(571) 272-2871

rupali.shah@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.