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: 5/27/2019

 

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:

 

• Registration of the mark is refused under Trademark Act Section 2(d)
• The applicant is domiciled in the United States but has asserted a Section 44(e) basis
• The marks in the U.S Application and foreign registration do not match
• The identification of goods and services in the U.S. Application exceeds the scope of the foreign registration
• The identification of goods and services includes unacceptable wording
• The applicant must clarify whether the color white is a feature of the mark

 

Section 2(d) Refusal: Likelihood of Confusion

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 5701792.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registration.

 

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).

 

The applicant has applied to register the mark “VSENSOR” in stylized form.  The registered mark is “IES VSENSOR”, with “IES” inside a square border and “VSENSOR” in the same stylization as shown in the applicant’s mark.

 

The applicant’s mark is highly similar to the registered mark because the marks both include the significant term VSENSOR, which term appears in identical color and stylization in both marks.  Although applicant’s mark does not contain the entirety of the registered mark, applicant’s mark is likely to appear to prospective purchasers as a shortened form of registrant’s mark.  See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985)).  Thus, merely omitting some of the wording from a registered mark may not overcome a likelihood of confusion.  See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257; In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii).  In this case, applicant’s mark does not create a distinct commercial impression from the registered mark because it contains some of the wording in the registered mark and does not add any wording that would distinguish it from that mark.

This is particularly true in the present case because “IES” appears to be a house mark. Adding a house mark to an otherwise confusingly similar mark will not obviate a likelihood of confusion under Section 2(d).  See In re Fiesta Palms LLC, 85 USPQ2d 1360, 1366-67 (TTAB 2007) (finding CLUB PALMS MVP and MVP confusingly similar); In re Christian Dior, S.A., 225 USPQ 533, 534 (TTAB 1985) (finding LE CACHET DE DIOR and CACHET confusingly similar); TMEP §1207.01(b)(iii).  It is likely that goods and/or services sold under these marks would be attributed to the same source.  See In re Chica, Inc., 84 USPQ2d 1845, 1848-49 (TTAB 2007). 

 

For the reasons discussed above, the applicant’s mark is confusingly similar to the registered mark.

 

Relatedness of the Goods and Services

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).

 

The applicant seeks to register the proposed mark for use on and in connection with various computer software, including that used for building performance analysis; building construction, renovation, and restoration and consulting services related thereto; computer software design and development, consulting services related to building performance analysis, and engineering services, in addition to multiple goods and services related to the above.

 

The registration lists the same type of goods and services.  Indeed, a large number of the parties’ goods and services are identical. The application and registration both include software for building performance analysis, consultation in the field of construction of environmentally-conscious buildings, consulting in the field of building construction, building construction services, technical consultation in the field of building construction, computer software design and development, and computer simulation based on computer programs of others.  As these goods and services in the application and registration are the same, there is no question they are related for likelihood of confusion purposes.

 

The applicant’s other software goods are related to software services listed in the registration, as the applicant and registrant both provide software used for the same or similar functions.  The application includes software for remotely monitoring environmental conditions in a building and software to control building environments. The registrant provides software for building performance analysis.  This software of the parties is related because building performance analysis relates to the environmental conditions of a building, and controlling those conditions in order to reduce energy consumption and increase energy efficiency.  (See the attached web page from support.sefaira.com).

 

The applicant’s Class 37 services include those that are identical to services listed in the registration, as noted above, as well as other services that are closely related to those of the registrant. The applicant’s services include building remodeling and renovation, which are encompassed within the more broadly identified “building construction services” listed in the registration, as building remodeling and renovation are a subset of building construction.

 

Similarly, the applicant’s Class 42 services include numerous services that are identical to, encompassing of, or encompassed by services listed in the registration.  Both the application and registration include multiple entries for computer software design, development, consulting, maintenance, and programming services.  The application also includes services relating to the design and development of “building performance analysis,” while the registration includes software for building performance analysis. Presumably, the applicant’s building performance analysis design and development services related to or include the design and development of software for that purpose. 

 

The application also includes engineering services for building and property condition assessment, facility management, repair and restoration and building instrumentation and engineering design services, while the registration lists engineering services for building and property condition assessment, engineering services in the field of energy efficiency, and engineering for building performance analysis. These engineering services are closely related, as the applicant’s engineering as it relates to facility management and building instrumentation could include activities undertaken for the purpose of energy efficiency and building performance analysis.

 

In addition, the goods and services in the application and registration as a whole are related, as the underlying nature and purpose of the goods and services is the same or closely related.  Both the applicant and registrant provide a variety of goods and services in the field of building performance analysis in addition to services that relate to the construction, monitoring, analysis, and design of buildings that are environmentally conscious or energy efficient.  Building performance analysis itself relates to constructing, monitoring, analyzing, and designing environmentally conscious or energy efficient buildings.  Thus, the goods and services listed in the application and registration are generally related, as they all pertain to building performance analysis or activities undertaken for the purpose of creating and maintaining energy efficient buildings.

 

The applicant’s mark is similar to the registered mark, and the goods and services of the parties are related. Accordingly, there would be a likelihood of confusion as to the source of the goods and services.  Registration of the applicant’s mark is therefore refused under Trademark Act Section 2(d) based on a likelihood of confusion with the mark in U.S. Registration No. 5701792.

 

The examining attorney notes that there appears to be some relationship between the applicant and the owner of the registered mark.  However, the application is owned by “Integrated Environmental Solutions,” a limited liability company of the United Kingdom, and the registration is owned by “Integrated Environmental Solutions Limited,” a corporation of the United Kingdom.  Thus, as reflected in the Office records, the application and registration are each owned by a different entity.

 

If the mark in the cited registration is owned by applicant, applicant may provide evidence of ownership of the mark 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 No. 5701792.”  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).

 

Although the trademark examining attorney has refused registration, applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.  If applicant chooses to respond to the refusal to register, then applicant must also respond to the following issues:

 

U.S. Applicant Asserts Section 44 Basis

Applicant is domiciled in the United States and has asserted a Trademark Act Section 44(e) filing basis in its application.  See 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3).  However, an applicant domiciled in the United States is generally not eligible to register a mark under Section 44(e) unless the applicant (1) owns a trademark registration from a foreign country that is a party to a treaty or agreement relating to trademarks to which the United States is also a party or extends reciprocal rights to nationals of the United States, and (2) can establish that the foreign country in which the trademark is registered is the applicant’s country of origin.  15 U.S.C. §1126(b)-(c); see TMEP §§1002.03-.05.  “Country of origin” refers to a country other than the United States in which an applicant has a bona fide and effective industrial or commercial establishment, or if there is no such establishment, the foreign country in which an applicant is domiciled.  15 U.S.C. §1126(c); TMEP §1002.04-.05.

 

If applicant intends to rely on Section 44(e) as a basis for registration, applicant must submit a written statement that applicant has a bona fide and effective industrial or commercial establishment in the foreign country in which its mark is registered.  See 15 U.S.C. §1126(c); TMEP §§1002.01, 1002.04-.05.

 

If applicant cannot satisfy the above requirement for a Section 44(e) basis, applicant can amend the application to substitute a Section 1(a) or Section 1(b) basis, if applicant can satisfy all of the requirements for the new basis.  See 15 U.S.C. §§1051(a)-(b), 1126(e); 37 C.F.R. §2.35(b), TMEP §806.03.

 

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

 

Mark in U.S. Application and Foreign Registration Does Not Match

The USPTO cannot accept applicant’s drawing of the mark in the U.S. application because it does not match the mark in the foreign registration; that is, the mark in the drawing is not a “substantially exact representation of the mark” in the foreign registration.  See 37 C.F.R. §2.51(c); TMEP §§807.12(b), 1011.01.  Only slight, inconsequential variations are permitted between the mark in the U.S. application and the mark in the foreign registration.  In re Hacot-Colombier, 105 F.3d 616, 619, 41 USPQ2d 1523, 1525 (Fed. Cir. 1997); In re Larios S.A., 35 USPQ2d 1214, 1216-17 (TTAB 1995); TMEP §1011.01. 

 

In this case, the U.S. drawing displays the mark as the stylized wording “VSENSOR”.  However, the foreign registration displays the mark as the wording “VSENSOR” to the right of the wording “IES” inside a square.  The mark in the U.S. drawing does not match the mark on the foreign registration because the foreign registration includes the wording “IES” and the mark in the U.S. Application does not. 

 

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 U.S. application.  See 37 C.F.R. §2.72(a)-(b); TMEP §§807.14 et seq.  Specifically, “IES” is distinctive wording, and the wording VSENSOR alone thus clearly does not convey the same impression as the wording “IES VSENSOR.”

 

Identification Issues

 

1. Identification in U.S. Application Exceeds Scope of Identification in Foreign Registration

 

Particular wording in the U.S. application’s identification of goods and/or services has been found to exceed the scope of goods and/or services in the foreign registration upon which the U.S. application relies.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.06 et seq., 1402.07.  For a U.S. application based on Section 44(e), 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).  Therefore, this wording is not considered part of the identification of goods and/or services in the U.S. application, and only the remaining wording in the identification is operative for purposes of future amendment.  See TMEP §1402.01(b); cf. TMEP §1402.07(d).

 

The particular scope issues are as follows:

 

Class 9

The U.S. Application includes “computer hardware and software system for remotely monitoring environmental conditions and controlling devices within a building, facility, grounds, or designated spatial area.” However, the foreign registration includes only computer programs, computer software, and computer databases, and does not include any computer hardware or computer systems. 

 

Class 37

The U.S. Application includes “building construction, remodeling and repair” and “construction and renovation of buildings,” but the foreign registration does not include any building construction services.  While the foreign registration does include consultancy in the field of building construction, consulting does not include the activity of actually constructing buildings.  Further, while the foreign registration does include “renovation and restoration of buildings,” this wording is included elsewhere in the current application.

 

Class 42

The application includes “Computer services, namely, designing and implementing web sites for others; Computer services, namely, creating, maintaining, designing and implementing web sites for others.”  However, while the foreign registration contains multiple entries for computer software or hardware design, it does not include any services relating to the websites of others. 

 

The application includes “Consultancy in the field of software design; Consulting services in the field of design, selection, implementation and use of computer hardware and software systems for others; Consulting services for others in the field of design, planning, and implementation project management of building performance analysis.”  The only consulting or advisory services listed in the foreign registration are “advisory services relating to building design, advisory services relating to energy efficiency, advisory services relating to environmental protection, advisory services relating to the use of computer software.” None of these advisory services include the consulting services as specified in the U.S. Application, as building design, energy efficiency, environmental protection, and the use of computer software do not include software design, the design, planning or implementation of project management, or the design, selection, and implementation of hardware and software systems. 

 

The U.S. identification includes “engineering services for building and property condition assessment, facility management, repair and restoration and building instrumentation; engineering design services; architectural and engineering services.”  The foreign registration includes no architectural services, and the only engineering services listed are “software engineering,” which as identified does not include engineering design or engineering for buildings or property. Further, “engineering” appearing alone in the U.S. Application is broader than “software engineering” because, while it could include software engineering, it could also include a wide range of other engineering services.

 

The application includes “design and development of building performance analysis; design for others in the field of building performance analysis; custom design and development of building performance analysis.” The only design or development services specified in the foreign registration are those relating to computer software, advisory services in the field of building design, design of engineered building systems, design of industrial buildings and building interiors, and “scientific and technological services and research and design relating thereto.”  As further discussed below, it is not clear what is meant by “design and development of building performance analysis.”  However, as identified, this wording exceeds the scope of the design or development services listed in the foreign registration, as it is not itself a building, engineered building system, or building interior.  Further, the U.S. Application does not specify that any of the design services relate to science or technology.

 

As explained above, certain wording in the U.S. application is not acceptable because it exceeds the scope of the goods and services specified in the foreign registration.  Applicant may respond to this issue 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, if possible, to ensure that all goods and/or services beyond the scope of the foreign registration are deleted from the U.S. application; or

 

(2)       Substituting a basis under Section 1(a) or 1(b) for those goods and/or services in the U.S. application that are beyond the scope of the foreign registration.  An applicant may assert more than one basis in an application (except Section 1(a) and 1(b) may not be asserted for the same goods and/or services), provided all requirements are satisfied for each claimed basis.

 

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, 806.03(h), 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.

 

2. Identification of Services Includes Unacceptable Wording

 

The identification of services in Classes 9 and 37 is acceptable.  However, the identification of services in Class 42 is unacceptable because it includes indefinite wording and the nature of the services is thus not sufficiently clear.  TMEP §1402.01.

 

The Class 42 identification includes “design and development of building performance analysis; design for others in the field of building performance analysis; consulting services for others in the field of design, planning, and implementation of project management of building performance analysis; custom design and development of building performance analysis.” This wording is unacceptable because the nature of “building performance analysis” in this context is not clear.  The services of “design and development” generally entail the design and development of tangible items for others.  However, “building performance analysis” appears to identify a particular type of analysis. Thus, it is not clear how this analysis is designed or developed, or whether this wording identifies proper services.  Therefore, the applicant must amend these portions of the identification to further specify the services.

 

Identification Requirements—Response Options

The applicant must amend the application to adopt an acceptable identification of goods and services.  As noted above, any goods and services listed with a Section 44(e) basis must be within the scope of the goods and services as identified in the foreign registration; for any goods and services not included within the foreign registration, an alternate filing basis must be specified.

 

The applicant may amend to adopt one or more of the following suggestions, if accurate.  Please note that, where specified, the applicant should clarify the relevant basis (Section 1(a) or Section 1(b)), if applicable.

 

INTERNATIONAL CLASS 9:  (Based on Section 44e) Computer programs, recorded, for building performance analysis; Computer software for building performance analysis; Facilities management software, namely, software to control building environment, access and security systems; Computer application software for desktops, laptops and servers, namely, software for building performance analysis; Computer programs for building performance analysis; (Specify applicable filing basis; e.g., Based on Use or Based on Intent to Use) Computer hardware and software system for remotely monitoring environmental conditions and controlling devices within a building, facility, grounds, or designated spatial area.

 

INTERNATIONAL CLASS 37: (Based on Section 44e) Building construction information; Consultation services in the field of construction of environmentally-conscious buildings; Consulting in the field of building construction; Renovation and restoration of buildings; Technical consultation in the field of building construction; (Specify applicable filing basis; e.g., Based on Use or Based on Intent to Use) Building construction, remodeling and repair; Construction of buildings.

 

INTERNATIONAL CLASS 42: (Based on Section 44e) Computer simulation based on computer programs for others; Computer software design for others; Computer software design, computer programming, and maintenance of computer software; Computer software development; Computer hardware and software design; Computer system design services; Consultancy in the field of software design; Consulting services in the design and implementation of computer-based information systems for businesses; Customizing computer software; Design of computer databases; Scientific and technological services, namely, research and design in the field of building performance analysis; Custom design and development of software used in building performance analysis; Design and development of software for building performance analysis; Design for others in the field of industrial buildings, building interiors, and engineered building systems that are designed to reduce energy use and manage a building’s energy consumption;  Consulting services for others in the field of building design and environmental protection, namely, consulting in the design and planning of energy efficient buildings, building interiors, and infrastructure for buildings; (Specify applicable filing basis; e.g., Based on Use or Based on Intent to Use) Computer services, namely, designing and implementing web sites for others; Computer services, namely, creating, maintaining, designing and implementing web sites for others; Consulting services in the field of design, selection, implementation and use of computer hardware and software systems for others; Engineering services for building and property condition assessment, facility management, repair and restoration and building instrumentation; Engineering design services; Architectural and engineering services.

 

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).

 

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.

 

Issues Pertaining to Color Claim and Mark Description

 

1. Foreign Registration Does Not Include Color Claim

 

Applicant must clarify whether color is a feature of the mark in the foreign registration.  See 37 C.F.R. §§2.37, 2.52(b)(1), 2.61(b); TMEP §807.07(a)-(a)(ii), (d)(ii).  The foreign registration and the drawing in the U.S. application show the mark in the same colors; however, only the U.S. application explicitly states that color is a feature of the mark.  Because the drawing of a mark in a U.S. application must be a substantially exact representation of the mark that appears in the foreign registration; any color claims in the U.S. application and foreign registration must match.  37 C.F.R. §2.51(c); In re Hacot-Colombier, 105 F.3d 616, 618-19, 41 USPQ2d 1523, 1525 (Fed. Cir. 1997); TMEP §§807.07(b), 1011.01; see United Rum Merchs. Ltd. v. Distillers Corp. (S.A.), 9 USPQ2d 1481 (TTAB 1988). 

 

To clarify whether color is claimed as a feature of the mark in the foreign registration, applicant may satisfy one of the following:

 

(1)       If the mark in the foreign registration is intended to be in color and includes a color claim or the legal equivalent, applicant must provide a statement that the foreign registration includes a color claim or the legal equivalent.  See TMEP §§807.07(d)(ii), 1011.01.

 

The following format for the statement is suggested:  The foreign registration includes a color claim or the legal equivalent for the color blue. 

 

(2)       If the mark in the foreign registration is not intended to be in color, applicant must provide a (a) new drawing for the U.S. application showing the mark only in black and white, and (b) statement that although the mark is registered in its country of origin featuring a color depiction of the mark, no claim of color is made in the foreign registration, and (c) description of the literal and design elements in the mark omitting any reference to color, for the U.S. application.  TMEP §§807.07(b), 1011.01; see TMEP §§808 et seq.  Additionally, although applicant may amend the drawing to delete color from the mark, any other amendments to the drawing will not be accepted if they would materially alter the mark.  37 C.F.R. §2.72(c)(2); TMEP §§807.14, 1011.01.

 

2. Applicant Must Clarify Whether White is a Feature of the Mark

 

The applicant has included a color claim stating that the colors white and blue are claimed as a feature of the mark, but the mark description includes only the color blue. The applicant must clarify this inconsistency.  See 37 C.F.R. §2.52(b)(1); TMEP §807.07(c).  If white is intended as a feature of the mark, the applicant must submit a new mark description that indicates the location of any white that is claimed in the mark.  If white is not a feature of the mark, the applicant must submit a new color claim that includes only the color blue.

 

Please note that, based on the drawing of record, the color white does not appear to be a color feature of the mark. Rather, the white shown in the drawing appears to be only background or transparency, as it does not form a distinct feature or enclosed area of the mark.  If this is the case, the applicant should respond to this requirement by deleting white from the color claim.

 

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.

 

The USPTO website provides information for those unfamiliar with the process of applying for federal trademark registration, such as an e-booklet about registering trademarks, FAQs, and more.  Two tools on the USPTO’s website that are particularly helpful during the examination process are the (1) informational videos and (2) application processing timelines.  The videos provide information in a broadcast news format regarding a range of issues that arise during the examination of an application, such as specimens and goods and services.  The application processing timelines provide information regarding the USPTO’s processing time for certain documents, as well as crucial legal deadlines.

 

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. §2.191; TMEP §§304.01-.02, 709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the issues in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

 

 

/Kimberly Frye/

Examining Attorney

Law Office 113

(p)571-272-9430

(f) 571-273-9430

(e) kimberly.frye@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 5/27/2019 FOR U.S. APPLICATION SERIAL NO. 88240642

 

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 5/27/2019, 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. 

 

/Kimberly Frye/

Examining Attorney

Law Office 113

(p)571-272-9430

(f) 571-273-9430

(e) kimberly.frye@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.