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: 3/26/2019

 

 

 

 

Introduction

 

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

 

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).

 

Drawing and Description

 

Applicant identifies two different marks in two different locations in the application; however, an application is limited to only one mark.  TMEP §807.01; see 37 C.F.R. §2.52.  Specifically, the mark FUCKIT with the description of the face design appears in the drawing in the application.  However, the design element alone appears on the drawing page. 

 

When an application includes a mark in the body of the application and a different mark in the drawing or in the “Mark” field, the mark in the drawing controls for purposes of determining what the mark is.  In re L.G. Lavorazioni Grafite, S.r.l., 61 USPQ2d 1063 (Dir USPTO 2001); TMEP §807.01.  Therefore, the applied-for mark in this application is the mark in the drawing, stylized cartoon face.

 

In addition, applicant must submit a concise description of the mark.  37 C.F.R. §2.37; see TMEP §§808 et seq.  The following is suggested:

 

The mark consists of a stylized cartoon face with a zig-zag line for a mouth and sunglasses.

 

 

Information on How to Respond to this Office Action

 

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.

 

Video Tutorials on Trademarks

 

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.

 

The USPTO website provides a “Basic Facts” booklet and video series that include information about registering a trademark, including how trademarks, patents, copyrights, domain names, and business name registrations all differ, and how to select the right mark – one that is both federally registrable and legally protectable.  They also explain the benefits of federal registration and suggest resources to help an applicant with filing an application. 

 

Legal Representation Suggested

 

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

 

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

 

An applicant may check the status of or view documents filed in an application or registration using the Trademark Status and Document Retrieval (TSDR) system.  Enter the application serial number or registration number and click on “Status” or “Documents.”

 

For assistance addressing the legal issues raised in this action, please contact the undersigned attorney.  For all other matters, including filing questions, status inquiries and general questions, please contact the Trademark Assistance Center at 1-800-786-9199 or 571-272-1000.

 

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

 

 

/Susan Leslie DuBois/

Susan Leslie DuBois

Examining Attorney

Law Office 111

susan.dubois@uspto.gov

571-272-9154

 

 

 

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 3/26/2019 FOR U.S. APPLICATION SERIAL NO. 88259273

 

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 3/26/2019, 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. 

 

/Susan Leslie DuBois/

Susan Leslie DuBois

Examining Attorney

Law Office 111

susan.dubois@uspto.gov

571-272-9154

 

 

 

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.