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: 4/17/2019

 

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.

 

SUMMARY OF ISSUES:

• SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
• IDENTIFICATION UNACCEPTABLE
• SIGNATURE REQUIRED

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

THESE PARTIAL REFUSALS ARE LIMITED TO THE CLASSES STATED THEREIN

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 4823194 and 4442851.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

 

Applicant’s mark is FOLLOW YOUR HEART. Registrants’ marks are FOLLOW YOUR HEART (limited to classes 9 and 42) and FOLLOW YOUR HEART & MAKE MONEY (limited to classes 35 and 41).

 

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.

 

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).

 

Slight differences in the sound of similar marks will not avoid a likelihood of confusion.  In re Energy Telecomm. & Elec. Ass’n, 222 USPQ 350, 351 (TTAB 1983); see In re Viterra Inc., 671 F.3d 1358, 1367, 101 USPQ2d 1905, 1912 (Fed. Cir. 2012).

 

1. Comparison with Registration No. 4823194

 

In the present case, applicant’s mark is FOLLOW YOUR HEART and registrant’s mark is FOLLOW YOUR HEART.  These marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.”  In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017).  Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods and/or services.  Id. Therefore, the marks are confusingly similar. 

 

2. Comparison with Registration No. 4442851

 

In this case, applicant’s mark is FOLLOW YOUR HEART and registrant’s mark is FOLLOW YOUR HEART & MAKE MONEY. 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, the wording FOLLOW YOUR HEART appears in applicant’s and registrant’s marks. Because the phrase appears in both marks, they are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods and services. In addition, the wording & MAKE MONEY in registrant’s mark does not obviate a likelihood of confusion refusal because it does not change the overall commercial impression of the mark, namely, to follow one’s desires. Therefore, the marks are confusingly similar.

 

Comparison 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 compared goods and/or services need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i).  They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).

 

1. Comparison with Registration No. 4823194

 

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, applicant’s use(s) broad wording includes computer programs, software, and cloud computing for the “collection, editing, organizing, modifying, book marking, transmission, storage and sharing of data and information, use in database management and use in electronic storage of data” in classes 9 and 42. This wording presumably encompasses all goods and/or services of the type described, including registrant’s more narrow “computer software for tracking heart rate, pulse rate, calories burned, distance walked, and steps taken; computer software for tracking heart rate variation, blood pressure, vasoconstriction, and perspiration; computer software for tracking sleep patterns, detecting the start and end of a sleep cycle, and determining the duration and quality of sleep; computer software for detecting whether a person is asleep and monitoring a person's movement and posture while the person is asleep; computer software for detecting and tracking a person's emotions, stress level, and level of fatigue; downloadable mobile applications for tracking heart rate, pulse rate, calories burned, distance walked, and steps taken.” Applicant’s goods therefore encompass the registrant’s goods.  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 goods 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)). Applicant’s services in class 42 are also highly related as they are non-downloadable software with the legally identical function to the registrant’s goods.

 

Additionally, the goods and/or 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 goods and/or services are related.

 

2. Comparison with Registration No. 4442851

 

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 registrant’s use(s) broad wording includes “business training” in class 41. This wording presumably encompasses all services of the type described, including applicant’s more narrow “traineeship services, namely, business education and training services in the nature of developing customized leadership and executive development programs, providing executive coaching services, and providing business education programs to employees and executives” in class 41. 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.

Attached Internet evidence also shows that it is common in the applicant’s industry for the same entity to provide the applicant’s business services in Class 35 under the same mark as the registrant’s business training services. For example, OmnitecInc.com offers the applicant’s services of business management consultancy under the same mark as the registrant’s services of business training. Therefore, as the applicant's services are encompassed in part by the registrant’s services and also offered by the same entity under the same mark as the registrants’ services, the services are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).

Conclusion

 

Because the marks are similar and the goods and services are related, there is a likelihood of confusion as to the source of applicant’s goods and services. Therefore, applicant’s mark is refused registration for Class(es) 9, 35, 41, and 42 under Trademark Act Section 2(d).

 

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

 

IDENTIFICATION UNACCEPTABLE

 

The wording “computer software” in the identification of goods is unacceptable must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Specifically, “computer software” must be specified as “downloadable” and/or “recorded” to clarify the nature of the goods and to have them properly classified in class 9.

 

Applicant may substitute the following wording (with the additional wording in bold), if accurate:

 

Class 9: Computer programs, recorded, for the collection, editing, organizing, modifying, book marking, transmission, storage and sharing of data and information, use in database management and use in electronic storage of data; computer software platforms, recorded, for the collection, editing, organizing, modifying, book marking, transmission, storage and sharing of data and information, use in database management and use in electronic storage of data; downloadable computer software for the collection, editing, organizing, modifying, book marking, transmission, storage and sharing of data and information, use in database management and use in electronic storage of data; downloadable computer software applications for the collection, editing, organizing, modifying, book marking, transmission, storage and sharing of data and information, use in database management and use in electronic storage of data; optical data media, namely, blank optical data carriers; optical data media, namely, optical discs featuring information in the field of business management; magnetic data media, namely, pre-recorded magnetic data carriers featuring information in the field of business management; blank USB flash drives; pre- recorded USB flash drives featuring information in the field of business management; downloadable electronic publications in the nature of books, newsletters and magazines in the field of business management; downloadable music files; downloadable image files containing text relating to business management; downloadable image files containing artwork, text, audio, video, games and Internet Web links relating to sporting and cultural activities; computer hardware; smartphones; mobile telephones; downloadable and recorded computer software for the collection, editing, organizing, modifying, book marking, transmission, storage and sharing of data and information, use in database management and use in electronic storage of data, all relating to the field of human resources; digital and non- digital data carriers, namely, blank optical data carriers, blank magnetic data carriers and blank USB flash drives; digital and non-digital data carriers, namely, pre-recorded optical discs, magnetic data carriers and USB flash drives all featuring information in the field of business management; computer and telecommunications networking products, namely, telecommunications and data networking hardware in the nature of devices for transporting and aggregating voice, data, and video communications across multiple network infrastructures and communications protocols; telecommunications apparatus and devices, namely, telecommunications transmitters, computer hardware for telecommunications and telecommunications equipment in the nature of fiber-optic transceivers, fiber optic repeaters, converters and optimizers, wave division multiplexers, free- space optics transmission systems, switches including Ethernet switches and routers, fiber-to-the-home and Ethernet-over- VDSL access aggregators, terminators and repeaters, and remote presence management products, namely, switches, and console, alarm, sensor and power management devices; downloadable electronic publications, namely, news reports, bulletins and study guides in the field of human resources; pre- recorded digital and non-digital data carriers featuring information about human resources

 

Class 35: Advertising and publicity services; on-line advertising on a computer network; business management consultancy; commercial information agency services; business efficiency expert services; conducting market studies; marketing research; business appraisals; business investigations; providing business information; outsourcing services; commercial information and advice for consumers in the choice of products and services; compilation of statistics; providing business information via a web site; commercial intermediation services, namely, providing business information to importers and foreign buyers at the time of contact with local producers; outsourced business administration and management for companies; import and export agencies; sales promotion for others; outsourcing services in the nature of arranging procurement of goods for others; consultation in the field of procurement of goods and services for others; procurement services, namely, procuring of contracts for others for the purchase of goods and labor contracting services; marketing services; provision of an on- line marketplace for buyers and sellers of goods and services; employment agency services; personnel management consultancy; psychological testing for the selection of personnel; compilation of information into computer databases; systemization of information into computer databases; administrative processing of purchase orders; updating and maintenance of data in computer databases; business administration services; business management; providing online searchable databases for employers featuring information about candidates and potential employees to fill temporary, contract and permanent positions; business management services, namely, personnel selection for others; providing of personnel, namely, personnel placement; temporary personnel services; employment agencies for personnel placement; providing business information about personnel matters; business management consulting in relation to personnel and retail sale matters; employment agencies specializing in personnel placement and personnel management; personnel consultancy and personnel management consultation; providing career information; personnel selection using psychological testing; employment outplacement services; interim business management; business project management services; business organization and business economics consultancy; business strategy development services; providing business support staff services during mergers and takeovers; management of computerized databases featuring information about personnel, employment vacancies and human resource management matters; career planning services; career placement consulting services; business consultation regarding the implementation of human resource policies; business consultation regarding internal and external corporate communications; management and compilation of computerized databases; advertising and promotional services; business administration assistance for telephone call centers regarding the administrative processing of purchase orders; providing office functions; publicity and sales promotion services; market research; advertising agency specializing in the design and execution of word of mouth, viral, buzz and experiential marketing programs; market analysis; dissemination of statistics, namely, providing business information regarding human resource statistics

 

Class 41: Career counseling, namely, providing advice concerning education options to pursue career opportunities; traineeship services, namely, business education and training services in the nature of developing customized leadership and executive development programs, providing executive coaching services, and providing business education programs to employees and executives; teaching in the field of business management; educational services, namely, conducting classes, seminars, conferences and workshops in the field of business management and distribution of course and educational materials in connection therewith; educational services, namely, conducting instructional classes, seminars, conferences and workshops in the field of business management and distribution of course and educational materials in connection therewith; vocational guidance; organizing educational and entertainment competitions, namely, organizing sports competitions and arranging and conducting educational competitions for students in the field of business management; arranging and conducting educational conferences; arranging and conducting educational congresses; arranging of seminars; conducting seminars in the field of business management; arranging professional workshop and training courses; organization of sports competitions; publication of texts, other than for publicity; publication of books; on-line publication of electronic books and journals; electronic desktop publishing; providing on-line non- downloadable electronic publications in the nature of books, newsletters and magazines in the field of business management; providing on-line music, not downloadable; providing on-line videos featuring business instruction, not downloadable; entertainment services, namely, competitions in the field of entertainment, education, culture, sports, and other non-business and non-commercial fields; entertainment information; educational services, namely, providing seminars, conferences and non-downloadable webinars in the field of human resources and distribution of course and educational materials in connection therewith; training services in the field of business management and distribution of educational materials in connection therewith; training personnel in the use and operation of computers and data processors; educational services, namely, developing curriculum for others in the field of business management; services of a publisher of both printed and electronic format material, namely, publication of books, magazines, journals, newspapers, periodicals, catalogs and brochures; publication of printed matter; publishing of electronic publications; organizing community sporting and cultural events; organizing events in the field of business management for cultural or educational purposes

 

Class 42: Temporary electronic storage of information and data; technical research in the field of artificial intelligence; telecommunications technology consultancy; computer programming; computer software consultancy; creating and maintaining web sites for others; rental of web servers; web site design consultancy; information technology (IT) consulting services; cloud computing featuring software for the collection, editing, organizing, modifying, book marking, transmission, storage and sharing of data and information, use in database management and use in electronic storage of data; computer technology consultancy; computer programming for others in the field of business management; design, development, installation, updating, maintenance and rental of computer software

 

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).

 

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.

 

SIGNATURE REQUIRED

 

The application was unsigned, resulting in the application not being properly verified.  See TMEP §804.  Applicant must properly sign and therefore verify the application in an affidavit or signed declaration under 37 C.F.R. §2.20.  See 37 C.F.R. §§2.2(n), 2.33(a), (b)(2)-(c), 2.34(a)(2), (a)(3)(i), (a)(4)(ii); TMEP §804.02. 

 

The following statements must be verified:  That applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; that applicant believes applicant is entitled to use the mark in commerce on or in connection with the goods or services specified in the application; that to the best of the signatory’s knowledge and belief, no other persons, except, if applicable, concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services of such other persons, to cause confusion or mistake, or to deceive; and that the facts set forth in the application are true.  37 C.F.R. §§2.33(b)(2), (c), 2.34(a)(2), (a)(3)(i), (a)(4)(ii).  For more information about this, see the Verified statement webpage.

 

To provide these verified statements.  After opening the correct TEAS response form, answer “yes” to wizard question #10, and follow the instructions within the form for signing.  In this case, the form will require two signatures:  one in the “Declaration Signature” section and one in the “Response Signature” section. 

 

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.

 

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

 

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.  

 

 

 

/Edward Payabyab/

Trademark Examining Attorney

Law Office 128

(571) 272-0021

edward.payabyab@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 4/17/2019 FOR U.S. APPLICATION SERIAL NO. 88276349

 

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 4/17/2019 (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.