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: 3/6/2019

 

 

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

 

SUMMARY OF ISSUES:

• Prior-filed Application
• Section 2(d) Refusal, in Part – Likelihood of Confusion
• Advisory: Claim of Ownership of Registrations
• Section 2(e)(4) Refusal – Primarily Merely a Surname
• Identification of Goods and Services – Clarification Required
• Advisory: Option to Delete Filing Basis

 

 

PRIOR-FILED APPLICATION

 

The filing date of pending U.S. Application Serial No. 79241388 precedes applicant’s filing date.  See attached referenced application.  If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced 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.

 

SECTION 2(d) REFUSAL, IN PART – LIKELIHOOD OF CONFUSION

 

THIS PARTIAL REFUSAL APPLIES TO CLASS 41 ONLY AND ONLY TO THE SERVICES SPECIFIED THEREIN.

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 5299177 and 5299178.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registration information.

 

Applicant’s mark is BAYER (in standard character form) for, in relevant part, publishing, namely, publications of medical regulations and standards concerning the use of medicines; publication of medical studies; publication of medical and pharmaceutical books, including information on current health care and pharmaceutical issues in International Class 41.

 

The registered marks, owned by Bayer 04 Leverkusen Fussball GmbH, are:

 

·    BAYER 04, U.S. registration No. 5299177 (in standard character form) and

 

·    1904 BAYER LEVERKUSEN, U.S. registration No. 5299178 (in special form).

 

Both marks for, in relevant part, “publishing in the nature of publishing of books and reviews, publishing of reviews, publishing of web magazines” in International Class 41.

 

Standard for Likelihood of Confusion

 

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.

 

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).

 

In this case, the marks create substantially similar commercial impressions because they are comprised of the identical dominant word BAYER.

 

Specifically, the marks are similar in appearance in that they include the identical word BAYER.  Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression.  See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii).

 

Here, applicant’s mark, “BAYER”, is encompassed in its entirety within the wording of the registered marks, “BAYER 04” and “1904 BAYER LEVERKUSEN”.  Incorporating the entirety of one mark within another does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d).  See Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 1022, 194 USPQ 419, 422 (C.C.P.A. 1977) (finding CALIFORNIA CONCEPT and surfer design and CONCEPT confusingly similar); Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL LANCER and design and BENGAL confusingly similar); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (finding BARR GROUP and BARR confusingly similar); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1090 (TTAB 2016) (finding JAWS DEVOUR YOUR HUNGER and JAWS confusingly similar); TMEP §1207.01(b)(iii).  In the present case, the marks are identical in part.

 

The likelihood of confusion is not obviated even though the marks are comprised of additional wording that is not shared in common.  For example, the mark in registration No. 5299177 includes “04”.  However, this numeral is insufficient to differentiate the marks since it is the first portion, “BAYER”, that is the dominant portion that engenders the mark’s 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”).    

 

Further, the likelihood of confusion is not negated even though the mark in registration No. 5299178 includes additional terms and design elements.  Specifically, registrant’s mark includes the additional terms “LEVERKUSEN” and “1904”.  However, this wording has been disclaimed and is less likely to affect the overall commercial impression of the mark.  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).  Here, the commercial impression of the mark is engendered in the dominant portion, “BAYER”, which is identical to applicant’s mark.

 

In addition, the registrant’s mark is in special form with the wording “BAYER” appearing twice with the two words intersecting in the shape of a cross inside a circle with two lions on either side.  However, the design elements in the registered mark are insufficient to differentiate the marks because the wording “BAYER” is the dominant portion that is most likely to be impressed in the mind and memory of consumers.  When evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services.  In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii).  Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed.  In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)). 

 

Here, consumers are likely to refer to registrant’s services simply by “BAYER”.  The word portions of the marks are identical in appearance, sound, connotation, and commercial impression; therefore, the addition of a design element does not obviate the similarity of the marks in this case.  See In re Shell Oil Co., 992 F.2d 1204, 1206, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993); TMEP §1207.01(c)(ii).

 

Overall, the marks are identical as to “BAYER”.  Thus, the marks are confusingly similar.

 

Relatedness of the Services

 

In a likelihood of confusion determination, the goods and/or services are compared to determine whether they are similar, commercially related, or travel in the same trade channels.  See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).

 

Determining likelihood of confusion is based on the description of the goods and/or services stated in the application and registration at issue, not on extrinsic evidence of actual use.  See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).  

 

In this case, the registrations use broad wording to describe publishing of books and reviews, which presumably encompasses all services of the type described, including applicant’s more narrow publication of medical and pharmaceutical books, including information on current health care and pharmaceutical issues.  In addition, the application uses broad wording to describe publishing, namely, publications of medical regulations and standards concerning the use of medicines and publication of medical studies, which presumably includes all services of the type describes, including registrant’s more narrow publishing in the nature of publishing of books and reviews, publishing of reviews, publishing of web magazines.  Here, the application broadly describes “publications” featuring particular subject matters which could encompass the registrant’s more narrow publishing of books, reviews, and web magazines that could feature the same subject matter as the applicant’s.  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 services 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 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 services are related.

 

In sum, upon encountering the similar marks of the applicant and registrant on the closely related services concerned in this case, consumers are likely to be confused and mistakenly believe that the respective services emanate from a common source or are connected in some way.  Based on this likelihood of source confusion, registration is refused under Section 2(d) of the Trademark Act.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.

 

ADVISORY: CLAIM OF OWNERSHIP OF REGISTRATIONS

 

If the marks in the cited registrations are owned by applicant, applicant may provide evidence of ownership of the marks by satisfying one of the following:

 

(1)       Record the assignment with the USPTO’s Assignment Recordation Branch (ownership transfer documents such as assignments can be filed online at http://etas.uspto.gov) and promptly notify the trademark examining attorney that the assignment has been duly recorded.

 

(2)       Submit copies of documents evidencing the chain of title.

 

(3)       Submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “Applicant is the owner of U.S. Registration Nos. 5299177 and 5299178.”  To provide this statement using the Trademark Electronic Application System (TEAS), use the “Response to Office Action” form; answer “yes” to wizard questions #3 and #10; then, continuing on to the next portion of the form, in the “Additional Statement(s)” section, find “Active Prior Registration(s)” and insert the U.S. registration numbers in the data fields; and follow the instructions within the form for signing.  The form must be signed twice; a signature is required both in the “Declaration Signature” section and in the “Response Signature” section.

 

TMEP §812.01; see 15 U.S.C. §1060; 37 C.F.R. §§2.193(e)(1), 3.25, 3.73(a)-(b); TMEP §502.02(a).

 

Recording a document with the Assignment Recordation Branch does not constitute a response to an Office action.  TMEP §503.01(d).

 

Applicant should note the following additional ground for refusal.

 

SECTION 2(e)(4) REFUSAL – PRIMARILY MERELY A SURNAME

 

Registration is refused because the applied-for mark is primarily merely a surname.  Trademark Act Section 2(e)(4), 15 U.S.C. §1052(e)(4); see TMEP §1211. 

 

In the present case, applicant applied to register the mark “BAYER” (in standard character form) in connection without various goods and services.

 

An applicant’s mark is primarily merely a surname if the surname, when viewed in connection with the applicant’s recited goods and/or services, “‘is the primary significance of the mark as a whole to the purchasing public.’”  Earnhardt v. Kerry Earnhardt, Inc., 864 F.3d 1374, 1377, 123 USPQ2d 1411, 1413 (Fed. Cir. 2017) (quoting In re Hutchinson Tech. Inc., 852 F.2d 552, 554, 7 USPQ2d 1490, 1492 (Fed. Cir. 1988)); TMEP §1211.01.

 

The following five inquiries are often used to determine the public’s perception of a term’s primary significance:

 

(1)       Whether the surname is rare;

 

(2)       Whether anyone connected with applicant uses the term as a surname;

 

(3)       Whether the term has any recognized meaning other than as a surname;

 

(4)       Whether the term has the structure and pronunciation of a surname; and

 

(5)       Whether the term is sufficiently stylized to remove its primary significance from that of a surname.

 

In re Eximius Coffee, LLC, 120 USPQ2d 1276, 1278 & n.2, 1282-83 (TTAB 2016) (citing In re Benthin Mgmt. GmbH, 37 USPQ2d 1332, 1333-34 (TTAB 1995) for the Benthin inquiries/factors); TMEP §1211.01; see also In re Etablissements Darty et Fils, 759 F.2d 15, 16-18, 225 USPQ 652, 653 (Fed. Cir. 1985). 

 

These inquiries are not exclusive, and any of these circumstances – singly or in combination – and any other relevant circumstances may be considered when making this determination.  In re Eximius Coffee, LLC, 120 USPQ2d at 1277-78; TMEP §1211.01.  For example, when the applied-for mark is not stylized, it is unnecessary to consider the fifth inquiry.  In re Yeley, 85 USPQ2d 1150, 1151 (TTAB 2007); TMEP §1211.01.

 

In the present case, “BAYER” would be readily perceived by the purchasing public as a surname.  The attached evidence from Wikipedia and LEXISNEXIS® establishes the surname significance of “BAYER”.  For example, the applied-for mark appears 16,146 times as a surname in the LEXISNEXIS® surname database, which is a weekly updated directory of cell phone and other phone numbers (such as voice over IP) from various data providers.  See attached evidence from LEXISNEXIS® showing the first 50 results.  Additionally, the attached evidence from Wikipedia notes that “BAYER” is a surname with various origins and provides a list notable people with that surname.  See attached evidence from Wikipedia.

 

Further, the attached evidence from applicant’s website and Wikipedia establishes that BAYER was the surname of one of the co-founders of applicant’s business.  A term that is the surname of an individual applicant or that of an officer, founder, owner, or principal of applicant’s business is probative evidence of the term’s surname significance.  TMEP §1211.02(b)(iv); see, e.g., In re Eximius Coffee, LLC, 120 USPQ2d 1276, 1278-80 (TTAB 2016) (holding ALDECOA primarily merely a surname where ALDECOA was the surname of the founder and individuals continuously involved in the business); In re Integrated Embedded, 120 USPQ2d 1504, 1507 (TTAB 2016) (holding BARR GROUP primarily merely a surname where BARR was the surname of the co-founder and applicant’s corporate officer and GROUP was found “incapable of lending source-identifying significance to the mark”).  Specifically, applicant’s website provides information on its history and indicates it was initially founded “by dye salesman Friedrich Bayer (1825–1880) and master dyer Johann Friedrich Weskott (1821–1876).”  See attached screenshots from www.bayer.com and www.Wikipedia.org.

 

In sum, the foregoing considerations result in the determination that the applied-for mark is primarily merely a surname.  Therefore, registration is refused under Section 2(e)(4) of the Trademark Act.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.

ADVISORY – Response Option: Section 2(f), Claim of Acquired Distinctiveness

A mark deemed primarily merely a surname may be registered on the Principal Register under Trademark Act Section 2(f) based on a claim of acquired distinctiveness.  See 15 U.S.C. §1052(f); 37 C.F.R. §2.41(a); TMEP §§1211, 1212.  Applicant may respond by asserting a claim of acquired distinctiveness based on one or more of the following:

 

1)     Five Years’ Use:  Applicant may submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “The mark has become distinctive of the goods and/or services through the applicant’s substantially exclusive and continuous use of the mark in commerce that the U.S. Congress may lawfully regulate for at least the five years immediately before the date of this statement.”  37 C.F.R. §2.41(a)(2); TMEP §1212.05(d); see 37 C.F.R. §2.193(e)(1).

 

2)     Other Evidence:  Applicant may submit other evidence of acquired distinctiveness, with the following statement, if accurate:  “The evidence shows that the mark has become distinctive of the goods and/or services.”  37 C.F.R. §2.41(a)(3); TMEP §1212.06.  Such additional evidence may include “advertising expenditures, sales success, length and exclusivity of use, unsolicited media coverage, and consumer studies (linking the name to a source).”  In re Change Wind Corp., 123 USPQ2d 1453, 1467 (TTAB 2017) (quoting In re Steelbuilding.com, 415 F.3d 1293, 1300, 75 USPQ2d 1420, 1424 (Fed. Cir. 2005)). 

 

If applicant cannot satisfy one of the above, applicant may respond by amending the application to seek registration on the Supplemental Register.  See 15 U.S.C. §1091; 37 C.F.R. §§2.47, 2.75(a).

 

Applicant must also respond to the requirements set forth below.

 

IDENTIFICATION OF GOODS & SERVICES – CLARIFICATION REQUIRED

 

As indicated by the suggestions in bold font below, certain wording in the identification of goods and services is indefinite and must be clarified to further specify the nature of the goods and services.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  An application must specify, in an explicit manner, the particular goods or services on or in connection with which the applicant uses, or has a bona fide intention to use, the mark in commerce.  See 15 U.S.C. §1051(a)(2), (b)(2); 37 C.F.R. §2.32(a)(6); TMEP §1402.01

 

In addition, applicant must correct the following:

• Remove the parentheses from the identification and incorporate any parenthetical information into the description of the goods and/or services.  Generally, applicants should not use parentheses and brackets in identifications in their applications so as to avoid confusion with the USPTO’s practice of using parentheses and brackets in registrations to indicate goods and/or services that have been deleted from registrations or in an affidavit of incontestability to indicate goods and/or services not claimed.  See TMEP §1402.12.
• Remove “and/or” and “or” from the identification of goods and/or services.  Such terms are generally not accepted in identifications and create ambiguity.  Here, it is unclear whether applicant is using the mark, or intends to use the mark, on all the identified goods or services.  See TMEP §1402.03(a). 
• Correct the punctuation in the identification to clarify the individual items in the list of goods and/or services.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01(a).  Proper punctuation in identifications is necessary to delineate explicitly each product or service within a list and to avoid ambiguity.  Commas, semicolons, and apostrophes are the only punctuation that should be used in an identification of goods and/or services.  TMEP §1402.01(a). In general, commas should be used in an identification (1) to separate a series of related items identified within a particular category of goods or services, (2) before and after “namely,” and (3) between each item in a list of goods or services following “namely” (e.g., personal care products, namely, body lotion, bar soap, shampoo).  Id.  Semicolons generally should be used to separate a series of distinct categories of goods or services within an international class (e.g., personal care products, namely, body lotion; deodorizers for pets; glass cleaners).  Id. 
• Correct typographical errors.  For example, the wording “bio chips” should be amended to “biochips”.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01(a).
• Delete duplicate entries as specified below.  See generally TMEP §§1402.01, 1402.01(a).  If applicant does not respond to this issue, be advised that the USPTO will remove duplicate entries from the identification prior to registration. If modifying one of the duplicate entries, applicant may amend it to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Also, generally, any deleted goods and/or services may not later be reinserted.  TMEP §1402.07(e).
• Clarify the nature of “accessories”. The identification for “computer software for managing a medical fluid delivery system and related accessories” in International Class 9 is indefinite and too broad and must be clarified because this wording does not make clear the nature of the type of accessory and could include goods in more than one international class.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03(a).  For example, accessory goods for this entry could include “medical fluid injectors” in International Class 10. Applicant must either (1) specify the common commercial or generic name for each accessory item, or (2) delete this wording from the identification.  See TMEP §§1402.01, 1402.03(a). 

 

Lastly, particular wording in the U.S. application’s identification of goods and/or services is not acceptable because it exceeds the scope of the goods and/or services in the foreign registration.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.06 et seq., 1402.07.  For a U.S. application based on Trademark Act Section 44, an applicant is required to list only goods and/or services that are within the scope of the goods and/or services in the foreign registration.  37 C.F.R. §2.32(a)(6); TMEP §§1012, 1402.01(b). 

 

As seen in the table below, the following goods and/or services in the U.S. application exceed the scope of goods and/or services in the foreign registration.  For example:

 

Application wording	Foreign registration wording
“Medicated lip balms, skin creams” in Class 5.	Exceeds scope of “medicated and sanitizing soaps and detergents” in Class 5.
“Computer applications and internet based to increase agricultural productivity and crop tools” in Class 9.	Internet based computer applications encompasses Class 42 services, namely, “Providing on-line, non-downloadable, Internet-based software application”. This wording appears to exceed the scope of Class 42 services in the foreign registration: Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; science and technology services; Information technology [IT]; consulting services; software development, programming and implementation; software research; design, development and implementation of software.
“Extravasation detection system for medical purposes comprised primarily of patient monitoring sensors, scan room and control room modules and sensor interface patches” in Class 9.	“Sensor interface patches” appears to encompass “adhesive tapes for medical purposes” in Class 5, and exceeds the scope of “medical dressings, coverings, and applicators” in Class 5 in the foreign registration.
“Forestry management services” in class 35.	Exceeds the scope of “business management” in Class 35.

 

Therefore, applicant may respond by satisfying one of the following:

 

(1)       Amending the identification of goods and/or services in the U.S. application to correspond to the goods and/or services in the foreign registration, ensuring that all goods and/or services beyond the scope of the foreign registration are deleted from the U.S. application; or

 

(2)       Deleting the Section 44 basis for the goods and/or services beyond the scope of the foreign registration and relying solely on the Section 1 basis for the remaining goods and/or services.   

 

See 15 U.S.C. §§1051(a)-(b), 1126; 37 C.F.R. §§2.32(a)(6), 2.34(b), 2.35(b); Marmark Ltd. v. Nutrexpa S.A., 12 USPQ2d 1843, 1845 (TTAB 1989); TMEP §§806.02, 806.04, 1402.01(b).  Additionally, applicant may respond by arguing that these goods and/or services are within the scope of the foreign registration and should remain in the U.S. application.

 

Applicant may substitute the following wording, if accurate (changes noted in bold font, deletions in strikethrough, and comments in italics):

 

International Class 1

Chemicals used in industry, science and photography except for preserving foodstuffs; {inserted semi-colon for clarity} chemicals for use in agriculture, horticulture and forestry, namely, chemical preparations for the treatment of seeds, except fungicides, herbicides, insecticides and parasiticides and except for preserving foodstuffs; Chemical substances for preserving foodstuffs; Growing media, fertilizers and chemicals for use in agriculture, horticulture and forestry except fungicides, herbicides, insecticides and parasiticides; Chemicals for use in aquaculture except fungicides, herbicides, insecticides and parasiticides; Chemical preparations for use in agriculture, horticulture and forestry, namely, chemical preparations for the treatment of seeds; chemicals for use in purification of water; natural microorganisms used in pond maintenance; microbial inoculants for application to seeds used in agriculture; plant growth regulating preparations

 

International Class 3

Bleaching preparations and other substances, namely, detergents, bleaches, starches for laundry use; cleaning, polishing, scouring and abrasive preparations; Non-medicated soaps; Perfumery; essential oils; non­-medicated cosmetics; non-medicated hair lotions; Non-medicated dentifrices {inserted semi-colons to separate distinct categories of goods}

 

International Class 5

Pharmaceuticals, medical and veterinary preparations for the treatment and or prevention of pain, fever, pulmonary, respiratory, nasal, ophthalmological, ocular, otological, cardiovascular, metabolic, oncological, urological, gynecological, reproductive, climacteric, inflammatory, circulatory, infectious, hormonal, endocrinological, lymphatic, neurological, muscular, skeletal, renal, fungal, parasitic, septic, infectious, digestive, dermatological, allergenic, virological, immunological, hematological, osteological, hyperlipidemic, and podiatric conditions and diseases, and for the treatment of vitamin, mineral and nutritional dietary deficiencies, insect bites and sexual dysfunction; Sanitary preparations for medical purposes; Dietetic food and dietetic substances, namely, beverages and infusions adapted for medical and veterinary use; antibacterial substances, astringent substances for the skin, medicated substances for the lips, skin and hair, namely, medicated lip balms, skin creams, soaps, shampoos and tissues impregnated with pharmaceutical lotions, medical substances, namely, medical diagnostic reagents, contrast media and substances for testing allergies {separated entries into distinct categories of goods and deleted wording that exceeds scope} antibacterial substances, astringent substances for the skin, medicated substances for the lips, skin and hair, namely, medicated lip balms, skin creams, soaps, shampoos and tissues impregnated with pharmaceutical lotions, medical substances, namely, medical diagnostic reagents, contrast media and substances for testing allergies, all adapted for medical or veterinary use; Food for babies;  Dietary supplements for humans and animals; Medical plasters; materials for medical dressings, namely, gauze and bandages for medical dressings; Material for stopping teeth, dental wax;  Disinfectants;  Preparations for destroying vermin;  Fungicides; herbicides

 

International Class 9

Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signaling, checking, supervision, life-saving and teaching apparatus and instruments, namely, computer programs and software for management and analysis of scientific and patent data and for the modeling and simulation of biological systems; sensitized biochips and bioreactive surfaces for research or scientific purposes; biochips containing nucleic acid, protein and receptor micro arrays, and microfluidic cell culture and biochip cartridges for use in nucleic acid and protonic research; laboratory apparatus and instruments, comprising fluidics instruments and optical excites and detectors, for the production and quality control of sensitized biochips and bioreactive surfaces containing chemical and biochemical sensors, nucleic acid, protein and receptor micro arrays; imaging systems comprising cameras and computers and exposure controls for use with photodiode arrays; computer software containing algorithms for identifying, filtering, quantifying and analyzing data from biochip images and controlling and automating the production, identification, assaying, imaging and analysis of biochips; computer software for the generation of databases and libraries, input of biochip data into databases and libraries, and interfacing with external databases and libraries for the correlation of analytical data with results from biological or pharmacological studies; electronic virus inactivation and disinfection apparatus for the ultraviolet treatment of biotechnological or human blood plasma-derived products, namely, pharmaceuticals, not for medical purposes; computer software for managing, analyzing and reporting medical injection and imaging data and protocols; computer software for tracking usage of contrast media and associated consumables; computer software for managing a medical fluid delivery system and related accessories, namely, ___ {specify related accessories in Class 9, or delete “and related accessories”}; computer software and associated computer hardware for use in collecting, storing, managing, processing, communicating and reporting of data obtained from medical devices, medical related devices and input devices to which the hardware interconnects; extravasation detection system comprised primarily of computer hardware and software for monitoring the injection of medical fluids and not for medical purposes; computer hardware and software used for diabetes monitoring and management; computer software for the collection, editing, organizing, modifying, book marking, transmission, storage and sharing of data and information; computer software for farm management; computer programs containing reference guides used for agricultural advice, crop management, crop treatment, product use directions and growth guides; encoded bar code product labels used for crop management, crop treatment, product use directions and compliance requirements and administrative forms used for crop registration, crop treatment and produce use and compliance stored in digital form for computers and computer software, in particular on floppy disks or CD-ROM, all in the field of agriculture; electronic interactive database of information in the field of agriculture recorded on computer media; Computer hardware and computer peripheral devices and computer software for use in the area of agriculture to perform the functions of machine optimization, logistics optimization and decision support; electronic systems to control and to manage farm machinery; computer programs for agricultural purposes, namely, ___ {specify function, e.g. “for collection and processing of agricultural data”, “database management”, etc.}; computer application software and internet based to increase agricultural productivity and for crop management tools {deleted “internet based” because it encompasses Class 42 software services}

 

International Class 10

Surgical, medical, dental and veterinary apparatus and instruments for the analysis of body fluids;  medical and veterinary apparatus and instruments, namely, injection systems containing a vial adapter with a gauge needle attached for the application of medicines containing beta-interferon;  medical devices for obtaining blood samples; medical cassettes for use with reagent dispensers, namely, cassettes containing reagents for dispensing of reagents for medical diagnostic purposes; medical instruments, namely, inhalators for the treatment of pulmonary hypertension, sold empty; medical devices, namely, intrauterine contraceptive devices; medical instruments, namely, a self-contained reconstitution set for the reconstitution and subsequent injection of pharmaceutical compounds; medical devices for delivering measured amounts of solutions into the bloodstream over time; medical devices for use in diagnostic or therapeutic procedures, namely, radiological imaging and interventional treatments; Medical apparatus for sterile fluid path systems, namely, disposable fluid path medical tubing for administration of fluids to a patient; syringes for medical purposes and for injections; computer controlled automatic injection system and automatic infusion system for injecting medical fluids during the process of diagnosis or treatment of a condition in an individual; medical fluid delivery systems consisting of injectors, syringes and disposable fluid path tubing; probes for medical purposes; patient monitoring devices for use with magnetic resonance imaging apparatus, namely, vital signs monitors; medical devices, namely, anatomical positioning devices systems in the nature of medical devices for use in immobilizing internal organs, particularly the prostate, during medical procedures for use with magnetic resonance imaging (MRI); medical devices, namely, coils and interface devices in the nature of anatomically conformable surface coils for use with magnetic resonance imaging (MRI) systems; extravasation detection system for medical purposes comprised primarily of patient monitoring sensors for use in scan rooms and control rooms for CT and MRI procedures and sensor interface patches {deleted wording encompasses Class 5 goods and exceeds scope of foreign registration}; orthopedic articles, namely, insoles, inserts for footwear, arch supports for footwear; orthotics for the foot; orthotic knee supports, namely, medical braces for the knee; arch inserts, namely, orthotic inserts for footwear; orthopedic and mobility aids, namely, Orthopedic implants made of artificial materials; Orthopedic soles; Orthopedic footwear; Insoles for orthopedic footwear; Shoe pads for orthopedic use; Orthopedic support bandages; Orthopedic insoles; {duplicate deleted} Inserts for shoes orthopaedic; {duplicate deleted} Orthotic footwear; Orthotic insoles; Orthotic inserts for footwear; Arch supports for footwear; Foot bandages supportive; Orthopedic toe inserts for footwear, namely, toe separators; Foot massagers; Foot massage apparatus

 

International Class 31

Raw and unprocessed agricultural and horticultural products, namely, unprocessed seeds for agricultural and horticultural use; raw and unprocessed grains and agricultural, horticultural, and vegetable seeds; fresh fruits and vegetables, fresh herbs; natural plants and flowers; bulbs, seedlings and seeds for planting; foodstuffs and beverages for animals; agricultural and aqua-cultural crops, namely, crop seeds; {rearranged wording and deleted duplicate entries} horticulture and forestry products, namely, unprocessed seeds for agricultural, aqua-cultural and forestry, and horticultural use; foodstuffs and fodder for animals; Fodder; animal foodstuffs

 

International Class 35

Advertising, marketing and promotional consultancy; advisory and assistance services with regard to business planning, business analysis, business management, business organization, marketing and customer analysis; business administration; business management; business advice; business consulting; business assistance, management and administrative services for others; business analysis, research and information services; Advertising and promotion services and related consulting; provision of an on-line marketplace for buyers and sellers of goods and services; sales promotions for others; retail and wholesale store services featuring medical preparations, veterinary preparations, pharmaceutical preparations, pharmaceuticals and natural remedies, dietary supplements and dietetic preparations, dietary supplements for humans and animals, dietetic food and substances adapted for medical or veterinary use, food for babies; retail and wholesale store services featuring sanitary preparations and articles, disinfectants and antiseptics, preparations for destroying vermin, fungicides, herbicides, medicated and sanitizing soaps and detergents, medical dressings, coverings and applicators, pest control preparations and articles, plasters, materials for dressings, material for stopping teeth, dental wax; forestry management services {exceeds scope of class 35 services}

 

International Class 41

Education services, namely, conducting seminars and workshops in the medical and pharmaceutical fields regarding the use and operation of computer software for managing, analyzing and reporting medical injection and imaging data and protocols and for tracking usage of contrast and associated consumables; Educational services, namely, providing of training, namely, seminars, workshops and conferences in the fields of medicine, lifestyle and health care; publishing, namely, publication of ___ {specify types of publications, e.g., books, handbooks, journals, magazines, periodicals, etc.} in the field of medical regulations and standards concerning the use of medicines; publication of ___ {specify types of publications, e.g., books, handbooks, journals, magazines, periodicals, etc.} in the field of medical studies; publication of medical and pharmaceutical books, brochures, newspapers, journals and newsletters including featuring information on current health care and pharmaceutical issues; online electronic publication of ___ {indicate specific type of publication, e.g., books, magazines, manuals, etc.} featuring information on current health care and pharmaceutical issues; Providing news in the nature of current event reporting relating to ___ {indicate subject matter or field} via the Internet; education services, namely, providing workshops, conferences and seminars in the field of agriculture

 

International Class 42

Scientific and technological services, namely, scientific research in the medical and pharmaceutical fields and research and design relating thereto, namely, design and testing of new products for others; industrial analysis of ___ {indicate goods or services of others} to assure compliance with industry standards in the medical and pharmaceutical fields; research in the medical and pharmaceutical fields; design and development of computer hardware and software; science and technology services, namely, industrial analysis of ___ {indicate goods or services of others} to assure compliance with industry standards in the health care and agriculture fields; scientific and technological research in the health care and agriculture fields; Information technology consulting services; software development, programming and implementation for others; software research; design, development and implementation of software

 

International Class 44

Medical services; veterinary services; hygienic and beauty care for human beings; hygienic and beauty care for animals; Agriculture services, namely, ___ {specify type of services, e.g., “compost spreading”, “pest control services for agriculture”, “planting, growing, fertilizing, pruning and picking ___ {indicate specific crops} for others”, etc.}; aquaculture services, namely, ___ {specify type of services, e.g., “the cultivation and breeding of plants or animals in a water environment”, “pest control services for aquaculture”, “insecticide spraying for aquaculture”, etc.}; horticulture services; forestry services, namely, pest control for forestry; human healthcare services; animal healthcare services

 

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.

 

SCOPE ADVISORY: Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See TMEP §1402.07(e).  Additionally, for U.S. applications filed under Trademark Act Section 44(e), the scope of the identification for purposes of permissible amendments may not exceed the scope of the goods and/or services identified in the foreign registration.  37 C.F.R. §2.32(a)(6); Marmark, Ltd. v. Nutrexpa, S.A., 12 USPQ2d 1843, 1845 (TTAB 1989) (citing In re Löwenbräu München, 175 USPQ 178, 181 (TTAB 1972)); TMEP §§1012, 1402.01(b).

 

ADVISORY: OPTION TO DELETE FILING BASIS

 

The application and subsequent preliminary amendment specify both an intent to use basis under Trademark Act Section 1(b) and reliance on a foreign registration under Section 44(e).  See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.34(a)(2)-(3).  However, the foreign registration alone may serve as a basis for obtaining a U.S. registration.  See 37 C.F.R. §2.34(a)(3); TMEP §806.01(d).  If applicant wants to rely solely on the foreign registration under Section 44(e) as the basis, applicant can request deletion of the Section 1(b) basis.  See 37 C.F.R. §2.35(b)(1); TMEP §806.04. 

 

Unless applicant indicates otherwise, the USPTO will presume that applicant is relying on both Sections 1(b) and 44(e).  Thus, although the mark may be approved for publication, it will not register until an acceptable allegation of use has been filed for the services based on Section 1(b).

 

RESPONDING TO THIS OFFICE ACTION

 

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

ADVISORY – TEAS PLUS AND TEAS RF REQUIREMENTS

 

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.  

 

 

 

/Luz Adorno/

Trademark Examining Attorney, Law Office 111

United States Patent and Trademark Office

(571) 272-4902

Luz.Adorno@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 3/6/2019 FOR U.S. APPLICATION SERIAL NO. 88236476

 

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 3/6/2019 (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.