| To: | Medical Consulting Network, Inc. (efiling@grr.com) |
| Subject: | U.S. Trademark Application Serial No. 88252671 - DMD - 9002/004 |
| Sent: | September 02, 2019 12:16:03 PM |
| Sent As: | ecom121@uspto.gov |
| Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 88252671
Mark: DMD
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Correspondence Address: GOTTLIEB, RACKMAN & REISMAN, P.C.
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Applicant: Medical Consulting Network, Inc.
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Reference/Docket No. 9002/004
Correspondence Email Address: |
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The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: September 02, 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:
I. Trademark Act Section 2(d) Refusal – Likelihood of Confusion
II. Trademark Act Sections 1 and 45 Refusal – CSA Refusal
III. Specimen Refusal
IV. Identification Amendment Required
V. Multiple-Class Application Requirements
VI. Information About Services Required
I. SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Please note that this refusal applies only to applicant’s Class 009, 035, and 042 goods and services.
· U.S. Registration No. 4922872, DMD, in standard characters, for “Providing a website for the electronic storage of data, files and messages; Providing temporary use of a non-downloadable web application for storing, transmitting and receiving secure data and messages.” Please note that this refusal applies only to applicant’s Class 009 and 042 goods and services.
· U.S. Registration No. 4826969, DMD, in standard characters, for “Advertising, promotional and marketing services in the nature of an email deployment campaign for others in the healthcare and medical fields; Advertising, marketing and promoting the goods of services of others in the healthcare and medical fields through the sending of email advertisements and messages; Business information services, namely, gathering and reporting information regarding the email addresses of others that are made available to other companies for commercial purposes.” Please note that this refusal applies only to applicant’s Class 035 services.
· U.S. Registration No. 5257265, DMD HEALTHCARE COMMUNICATIONS NETWORK, in standard characters, for “Business monitoring services, namely, tracking web sites of others to provide details about user click traffic or visits to the web site; database management; digital advertising services; management and compilation of computerized databases; providing an on-line database providing business intelligence in the fields of medical devices, pharmaceuticals and life sciences; advertising, promotional and marketing services in the nature of an email deployment campaign for others in the healthcare and medical fields; advertising, marketing and promoting the goods of services of others in the healthcare and medical fields through the sending of email advertisements and messages; business information services, namely, gathering and reporting information regarding the email addresses of others that are made available to other companies for commercial purposes.” Please note that this refusal applies only to applicant’s Class 035 services.
Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
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 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. 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.
A. Comparison of the Marks
Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)); TMEP §1207.01(b).
When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.” Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b). The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks. In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (CCPA 1971)); TMEP §1207.01(b).
Here, the wording in applicant’s mark DMD is identical to the wording in registrant’s marks DMD and DMD; accordingly, they are also identical in sound and overall commercial impression. The word portions of the marks are nearly 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).
Then, with respect to DMD HEALTHCARE COMMUNICATION NETWORK, 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 Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). Matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant in relation to other wording in a mark. See Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1824-25 (TTAB 2015) (citing In re Chatam Int’l Inc., 380 F.3d 1340, 1342-43, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004)).
In the present case, the wording HEALTHCARE COMMUNICATION NETWORK in the registered mark has been disclaimed as being merely descriptive of or generic for the registrant’s goods and/or services. Thus, this wording is less significant in terms of affecting the mark’s commercial impression, and renders the wording DMD the more dominant element of the mark.
As such, applicant’s mark DMD is identical to the dominant portion of registrant’s mark, DMD, in terms of appearance and sound. In addition, the connotation and commercial impression of the marks do not differ when considered in connection with applicant's and registrant’s respective goods. Therefore, the marks are confusingly similar.
Finally, although applicant’s mark is stylized and contains design elements, these additional elements are not sufficient to obviate any confusion because registrants’ marks are standard character marks. A mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition. See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii). Thus, a mark presented in stylized characters and/or with a design element generally will not avoid likelihood of confusion with a mark in typed or standard characters because the word portion could be presented in the same manner of display. See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”).
B. Comparison of the Goods
First, with respect to U.S. Registration No. 4922872, DMD, applicant’s Class 009 and 042 software is highly related to registrant’s web software because they both allow for the storing, transmitting and receiving secure data and messages. Specifically, applicant’s “Downloadable mobile application for medical office patient sign in, patient verification system, and patient scheduling” and “Online non-downloadable patient management software for physicians in the field of medical cannabis; Online non-downloadable medical practice management and scheduling software for physicians in the field of medical cannabis; Online non-downloadable video chat software” allow for communication between patients and doctors and/or patients and medical offices. Accordingly, these goods and services are related.
Then, with respect to U.S. Registration Nos. 4826969 (DMD) and 5257265 (DMD HEALTHCARE COMMUNICATIONS NETWORK), both owned by the same registrant, these services are related because they all involve advertising and promoting the goods and services of others in the healthcare and medical fields. Therefore, these services are highly related.
In sum, consumers are likely to encounter the parties’ goods in the same commercial contexts. Given the similarity of the marks overall and the related nature of the goods, consumers encountering the marks are likely to mistake the underlying sources of the goods.
Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.
Applicant should note the additional grounds for refusal.
II. TRADEMARK ACT SECTIONS 1 AND 45 REFUSAL – CSA REFUSAL
Please note that this refusal applies only to applicant’s Class 009 and Class 035 goods and services.
Registration is refused because the applied-for mark is not in lawful use in commerce. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; see TMEP §907.
To qualify for federal trademark/service mark registration, the use of a mark in commerce must be lawful. Gray v. Daffy Dan’s Bargaintown, 823 F.2d 522, 526, 3 USPQ2d 1306, 1308 (Fed. Cir. 1987) (stating that “[a] valid application cannot be filed at all for registration of a mark without ‘lawful use in commerce’”); TMEP §907; see In re Stellar Int’l, Inc., 159 USPQ 48, 50-51 (TTAB 1968); Coahoma Chemical Co., Inc. v. Smith, 113 USPQ 413 (Com’r Pat. & Trademarks 1957) (concluding that “use of a mark in connection with unlawful shipments in interstate commerce is not use of a mark in commerce which the [Office] may recognize.”). Thus, the goods and/or services to which the mark is applied must comply with all applicable federal laws. See In re Brown, 119 USPQ2d 1350, 1351 (TTAB 2016) (citing In re Midwest Tennis & Track Co., 29 USPQ2d 1386, 1386 n.2 (TTAB 1993) (noting that “[i]t is settled that the Trademark Act’s requirement of ‘use in commerce,’ means a ‘lawful use in commerce’”)); In re Pepcom Indus., Inc., 192 USPQ 400, 401 (TTAB 1976); TMEP §907.
Here, the evidence of record, namely, excerpts from applicant’s website and applicant’s specimen of record, indicates that at least some of the items or activities to which the proposed mark will be applied are unlawful under the federal Controlled Substances Act (CSA), 21 U.S.C. §§801-971.
The CSA prohibits, among other things, manufacturing, distributing, dispensing, or possessing certain controlled substances, including marijuana and any material or preparation containing marijuana. 21 U.S.C. §§812, 841(a)(1), 844(a); see also 21 U.S.C. §802(16) (defining “[marijuana]” as “all parts of the plant Cannabis sativa L., whether growing or not; the seeds thereof; the resin extracted from any part of such plant; and every compound, manufacture, salt, derivative, mixture, or preparation of such plant, its seeds or resin” (subject to certain exceptions)).
In this case, the specimen of record and attached excerpt from applicant’s website plainly indicates that applicant’s identified goods/services include items and/or activities that are prohibited by the CSA, namely, downloadable mobile applications in Class 009 that allow for the purchase of medical marijuana (see applicant’s specimen of record that shows the “online order” option), applicant’s Class 035 services that include an on-line shopping mall, allowing for the purchase of medical marijuana, and applicant’s Class 042 services that include .
In order for an application to have a valid basis that could properly result in a registration, the use of the mark has to be lawful. See In re Pepcom Indus., Inc., 192 USPQ 400, 401 (TTAB 1976) The claimed use of the applied-for mark in connection with goods and/or services featuring products that meet the definition of marijuana was not lawful commerce as of the filing date. See In re Brown, 119 USPQ2d, 1351-1352.
On December 20, 2018, the CSA was amended to remove “hemp” from the definition of marijuana and specifically exclude “tetrahydrocannabinols in hemp (as defined under section 297A of the Agricultural Marketing Act of 1946)” from Schedule I, 21 U.S.C. §812(c)(17). Because the identified goods and/or services consist of or include items or activities that are still prohibited under the Controlled Substances Act, the applicant did not have a valid filing basis for any such items or activities. To the extent the applicant’s goods are derived solely from cannabis plants that meet the current statutory definition of hemp, such goods may be lawful.
Therefore, in order to overcome this refusal, applicant must amend the identification of goods and services to specify that all cannabis-containing items are “solely derived from hemp with a delta-9 tetrahydrocannabinol [THC] concentration of not more than 0.3 percent on a dry weight basis.”
The applicant may also present arguments and evidence against this refusal.
Applicant should note the final grounds for refusal.
III. SPECIMEN REFUSAL
Please note that this refusal applies only to applicant’s Class 041 services.
Registration is refused because the specimen does not show the applied-for mark in use in commerce in International Class 041. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a), 1301.04(g)(i). Specifically, applicant has submitted a specimen showing provision of information about medical cannabis; however, this is not a Class 041 services.
An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of services identified in the application or amendment to allege use. 15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).
Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and webpages that show the mark used in the actual sale, rendering, or advertising of the services. See TMEP §1301.04(a), (h)(iv)(C). Specimens comprising advertising and promotional materials must show a direct association between the mark and the services. TMEP §1301.04(f)(ii).
Applicant may respond to this refusal by satisfying one of the following for each applicable international class:
(1) Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the services identified in the application or amendment to allege use. A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20: “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.” The substitute specimen cannot be accepted without this statement.
(2) Amend the filing basis to intent to use under Section 1(b), for which no specimen is required. This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.
For an overview of both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/specimen.jsp.
If applicant responds to these refusals, applicant must also respond to the following requirements.
IV. IDENTIFICATION AMENDMENT REQUIRED
Then, applicant has misclassified a few of the goods and services, which are indicated below.
Additionally, applicant has provided the application fee for only 5 international classes. Thus, not all international classes in the application are covered by the application fee(s). Because of this disparity, applicant must clarify the number of classes for which registration is sought. See 37 C.F.R. §§2.32(d), 2.86.
Applicant may respond by (1) adding one or more international class(es) to the application, and reclassifying the above goods and/or services accordingly; or (2) deleting from the application the goods and/or services for all but the number of international class(es) for which the application fee was submitted. See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq. If applicant adds one or more international classes to the application, applicant must comply with the multiple-class application requirements specified in this Office action.
If accurate, applicant may adopt the following identification in their appropriate international classes:
International Class 009: Downloadable mobile applications {indefinite – clarify function, e.g., for helping users find medical cannabis providers through
use of a featuring a medical cannabis provider directory}; Downloadable mobile applications {indefinite – clarify function, e.g., for tracking
medical symptoms of users featuring a symptom tracker}; Downloadable mobile application for medical office patient sign in, patient verification system
{indefinite – clarify to make this a software function}, and patient scheduling; Downloadable mobile applications featuring information on medical cannabis; Downloadable mobile
applications for use in the collection and analysis of personal medical data and for providing product recommendations; Online downloadable {indefinite, must note that these are
“electronic”} publications, namely guides, forms, brochures, and pamphlets, in the field of medical cannabis
International Class 035: Online {indefinite and broad, must specify this is a business directory to ensure proper classification} business directory
featuring medical cannabis doctors, dispensaries, and clinics; Advertising and directory services, namely, promoting the services of others by providing a web directory {indefinite
– further clarify, e.g., “featuring links to the websites of others”}; Providing a website featuring guides, information, blogs, news, articles, research, case studies, and recipes, in the
field of medical cannabis {misclassified – blogs are in Class 041, recipes are in Class 043, the rest is in Class 044}; Healthcare management service organization (MSO)
services, namely, providing practice organization, management and administrative support services to individual physicians or small group practices; Providing a website featuring information on
medical cannabis laws {misclassified – move to Class 045}; Affiliate marketing; On-line promotion of computer networks and websites; Providing a searchable online
advertising website and informational guide featuring the goods and services of other vendors via the internet in the field of physicians servicing the medical cannabis industry; Promoting the goods
and services of others by means of operating an on-line shopping mall with links to the retail web sites of others; Providing a web site featuring information {currently too broad –
need further clarification on the information to ensure proper classification, e.g., in the nature of ratings, reviews and recommendations} on physicians' for the purpose of assisting prospective
patients in making physician selection decisions; Medical referrals; physician referrals; Medical data management services for, namely, electronic data collection for
business purposes for medical practice management
International Class 041: Providing a website featuring non-downloadable videos in the field of medical cannabis; On-line journals, namely, blogs featuring {clarify, e.g., information in the field of} medical cannabis; Online non-downloadable electronic publications, namely, newsletters in the field of medical
cannabis; Online journals, namely, blogs featuring information on medical cannabis; Providing on-line resource guides in the field of medical cannabis; {misclassified – move
to Class 044}
International Class 042: Online non-downloadable patient management software for physicians in the field of medical cannabis; Online non-downloadable medical practice management and scheduling software for physicians in the field of medical cannabis; Online non-downloadable video chat software
International Class 043 [if adopted]: Providing a website featuring information in the field of recipes for medical cannabis
International Class 044: Telemedicine services; providing information in the nature of on-line resource guides in the field of medical cannabis; providing information in the nature of news, articles, research, and case studies in the field of medical cannabis
International Class 045 [if adopted]: Providing a website featuring information on medical cannabis laws
An applicant may only amend an identification to clarify or limit the goods and services, but not to add to or broaden the scope of the goods and services. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.
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 at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.
V. MULTIPLE-CLASS APPLICATION REQUIREMENTS – ADVISORY
Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class.
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule). Specifically, the application identifies goods and/or services based on use in commerce that are classified in at least 7 classes; however, applicant submitted a fee(s) sufficient for only 5 class(es). Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.
(3) Submit verified dates of first use of the mark anywhere and in commerce for each international class. See more information about verified dates of use.
(4) Submit a specimen for each international class. The current specimen is acceptable for class(es) 009, 035, 042, and 044; and applicant needs a specimen for classes 041, 043, and 045. See more information about specimens.
Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and website printouts that show the mark used in the actual sale, rendering, or advertising of the services.
(5) Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.” See more information about verification.
See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class. See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a). See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.
VI. INFORMATION ABOUT SERVICES REQUIRED
Factual information about the services must clearly indicate what the services are and how they are rendered, their salient features, and their prospective customers and channels of trade. Conclusory statements regarding the services will not satisfy this requirement for information.
In addition, applicant must submit a written statement indicating whether the services identified in the application comply with the Controlled Substances Act (CSA), 21 U.S.C. §§801-971. See 37 C.F.R. §2.69; TMEP §907. The CSA prohibits, among other things, manufacturing, distributing, dispensing, or possessing certain controlled substances, including marijuana and any material or preparation containing marijuana. 21 U.S.C. §§812, 841(a)(1), 844(a); see also 21 U.S.C. §802(16) (defining “[marijuana]” as “all parts of the plant Cannabis sativa L., whether growing or not; the seeds thereof; the resin extracted from any part of such plant; and every compound, manufacture, salt, derivative, mixture, or preparation of such plant, its seeds or resin” (subject to certain exceptions)).
Finally, applicant must provide written responses to the following questions:
Failure to comply with a request for information is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814. Merely stating that information about the goods and services is available on applicant’s website is an insufficient response and will not make the relevant information of record. See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).
ASSISTANCE
TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.
How to respond. Click to file a response to this nonfinal Office action
/Elle Marino/
Trademark Examining Attorney
Law Office 121
Phone: (571) 270-3699
E-mail: elle.marino@uspto
RESPONSE GUIDANCE
