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: 4/23/2019

 

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:

 

• TRADEMARK ACT SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
• IDENTIFICATION OF GOODS AND SERVICES

 

TRADEMARK ACT SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

 

Registration of the applied-for mark GENERIS is refused because of a likelihood of confusion with the registered mark GENARIS in U.S. Registration No. 3829708.  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.

 

Applicant’s standard-character mark is GENERIS for:

 

“Computer software for recording, analysis, storage, manipulation and organization of genetic and molecular data; computer software for providing access to multiple databases that contain aggregated results of molecular biology testing and genotyping; Downloadable software in the nature of a mobile application for recording, analysis, storage, manipulation and organization of genetic and molecular data; Downloadable software in the nature of a mobile application for providing access to multiple databases that contain aggregated results of molecular biology testing and genotyping” in Class 9; and

 

“Diagnostic test kits for scientific use comprised of devices for collecting DNA samples in the nature of DNA collecting tubes, collection envelopes, and instruction manuals for using diagnostic test kits, all used for the purpose of researching genealogical history, wellness assessment and gaining insight into how the body responds to micronutrients, nutrients, vitamins and supplements; vitamin and mineral supplements” in Class 10; and

 

“Providing scientific analysis and informational reports based on the results of laboratory testing in the field of genetics, wellness assessment and the utility of micronutrients, nutrients, vitamins and supplements; providing online computer databases featuring information based on aggregated results of genotyping; application service provider featuring software for providing access to multiple databases that contain aggregated results of genotyping; application service provider featuring software for use in data management, data storage, data analysis, report generation, user identification, and membership identification, all in the fields of genetics and genetic testing; scientific research in the fields of genetics, genetic testing, genetic screening, genotyping, phenotyping, molecular analytics, and ancestry” in Class 42; and

 

“Online social networking services in the field of genetics; online social networking services that allows users to share and discuss genetic test results, including wellness assessments based on the genetic test results” in Class 45.

 

Registrant’s standard-character mark GENARIS is for:

 

“Chemical, biochemical, biological and bacteriological research and analysis; chemistry consultation; consultancy in the field of software design used for scientific research and analysis; computer hardware development used for scientific research and analysis” in Class 42.

 

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).

 

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 applicant’s and registrant’s marks are identical except for the presence of an “E” in applicant’s mark GENERIS versus an “A” in registrant’s mark GENARIS.  The marks are both seven letters long, and both marks begin with the three letters “GEN” and end with the three letters “RIS”.  While the differing vowels in the middle of the marks may make the marks sound slightly different when spoken, 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).

 

The applicant’s and registrant’s marks are identical except as to the vowels used as the fourth letters in the marks, and the slight difference in sound does not obviate the similar appearance, connotation, and commercial impression of the marks.  Accordingly, applicant’s and registrants’ marks are confusingly similar in their entireties when giving each feature of the marks their appropriate weight.

 

SIMILARITY OF THE GOODS AND SERVICES

 

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).

 

In this case, the applicant’s and registrant’s marks are virtually identical.  Generally, the greater degree of similarity between the applied-for mark and the registered mark, the lesser the degree of similarity between the goods and/or services of the parties is required to support a finding of likelihood of confusion.  In re C.H. Hanson Co., 116 USPQ2d 1351, 1353 (TTAB 2015) (citing In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001)); In re Thor Tech, Inc., 90 USPQ2d 1634, 1636 (TTAB 2009). 

 

Consumers are likely to be confused by the use of similar marks on or in connection with goods and with services featuring or related to those goods.  TMEP §1207.01(a)(ii); see In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1051 (Fed. Cir. 2018) (finding retail shops featuring sports team related clothing and apparel related to various clothing items, including athletic uniforms); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988) (finding retail grocery and general merchandise store services related to furniture); In re United Serv. Distribs., Inc., 229 USPQ 237 (TTAB 1986) (finding distributorship services in the field of health and beauty aids related to skin cream); In re Phillips-Van Heusen Corp., 228 USPQ 949 (TTAB 1986) (finding various items of men’s, boys’, girls’ and women’s clothing related to restaurant services and towels); Steelcase Inc. v. Steelcare Inc., 219 USPQ 433 (TTAB 1983) (finding refinishing of furniture, office furniture, and machinery related to office furniture and accessories); Mack Trucks, Inc. v. Huskie Freightways, Inc., 177 USPQ 32 (TTAB 1972) (finding trucking services related to motor trucks and buses).

 

Here, applicant’s goods and services in Classes 9, 10, 42, and 45 are all related to the analysis of genetic and other biological data.  Registrant’s services, which include chemical, biochemical, biological and bacteriological research and analysis, are offered under the same mark as applicant’s goods and services and are complimentary in terms of purpose and function.

 

Applicant’s Class 9 Goods and Registrant’s Class 42 Services

 

Applicant’s goods at issue are as follows: “Computer software for recording, analysis, storage, manipulation and organization of genetic and molecular data; computer software for providing access to multiple databases that contain aggregated results of molecular biology testing and genotyping; Downloadable software in the nature of a mobile application for recording, analysis, storage, manipulation and organization of genetic and molecular data; Downloadable software in the nature of a mobile application for providing access to multiple databases that contain aggregated results of molecular biology testing and genotyping.”

 

Registrant’s services at issue are as follows: “Chemical, biochemical, biological and bacteriological research and analysis.”

 

The attached Internet evidence, consisting of captures from the websites of 23andMe, Ancestry, CNN, Living DNA, and Google Play establishes that the same entity commonly uses software for analysis and storage of genetic and molecular data and applications providing access to databases containing this information and provides biological research and analysis in the form of DNA testing and analysis under the same mark.  The evidence also shows the goods and services are similar or complementary in terms of purpose or function, which is to determine the biological composition of tested samples.  Thus, applicant’s goods and registrant’s and 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).

 

Applicant’s Class 10 Goods and Registrant’s Class 42 Services

 

Applicant’s goods at issue are as follows: “Diagnostic test kits for scientific use comprised of devices for collecting DNA samples in the nature of DNA collecting tubes, collection envelopes, and instruction manuals for using diagnostic test kits, all used for the purpose of researching genealogical history, wellness assessment and gaining insight into how the body responds to micronutrients, nutrients, vitamins and supplements; vitamin and mineral supplements.”

 

Registrant’s services at issue are as follows: “Chemical, biochemical, biological and bacteriological research and analysis.”

 

The attached Internet evidence, consisting of captures from the websites of 23andMe, Ancestry, CNN, and Living DNA establishes that the same entity commonly sells genetic testing kits and provides biological research and analysis in the form of DNA testing and analysis under the same mark.  The evidence also shows the goods and services are similar or complementary in terms of purpose or function, which is to obtain biological samples and determine the biological composition of those samples.  Thus, applicant’s goods and registrant’s and 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).

 

Applicant’s Class 42 Services and Registrant’s Class 42 Services

 

Applicant’s services at issue are as follows: “Providing scientific analysis and informational reports based on the results of laboratory testing in the field of genetics, wellness assessment and the utility of micronutrients, nutrients, vitamins and supplements; providing online computer databases featuring information based on aggregated results of genotyping; application service provider featuring software for providing access to multiple databases that contain aggregated results of genotyping; application service provider featuring software for use in data management, data storage, data analysis, report generation, user identification, and membership identification, all in the fields of genetics and genetic testing; scientific research in the fields of genetics, genetic testing, genetic screening, genotyping, phenotyping, molecular analytics, and ancestry.”

 

Registrant’s services at issue are as follows: “Chemical, biochemical, biological and bacteriological research and analysis.”

 

In this case, the registration uses broad wording to describe “chemical, biochemical, biological and bacteriological research and analysis,” which presumably encompasses all services of the type described, including applicant’s more narrow “providing scientific analysis and informational reports based on the results of laboratory testing in the field of genetics, wellness assessment and the utility of micronutrients, nutrients, vitamins and supplements; scientific research in the fields of genetics, genetic testing, genetic screening, genotyping, phenotyping, molecular analytics, and ancestry.”  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 specified services are related.

 

As to applicant’s “providing scientific analysis and informational reports based on the results of laboratory testing in the field of genetics, wellness assessment and the utility of micronutrients, nutrients, vitamins and supplements; providing online computer databases featuring information based on aggregated results of genotyping; application service provider featuring software for use in data management, data storage, data analysis, report generation, user identification, and membership identification, all in the fields of genetics and genetic testing,” the attached Internet evidence, consisting of captures from the websites of 23andMe, Ancestry, CNN, Living DNA, and Google Play establishes that the same entity commonly offers genetic reporting and analyzes and stores this information in databases and provides biological research and analysis in the form of DNA testing and analysis under the same mark.  The evidence also shows the services are similar or complementary in terms of purpose or function, which is to determine the biological composition of DNA samples and perform analysis thereof.  Thus, applicant’s and registrant’s 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).

 

Applicant’s Class 45 Services and Registrant’s Class 42 Services

 

Applicant’s services at issue are as follows: “Online social networking services in the field of genetics; online social networking services that allows users to share and discuss genetic test results, including wellness assessments based on the genetic test results.”

 

Registrant’s services at issue are as follows: “Chemical, biochemical, biological and bacteriological research and analysis.”

 

The attached Internet evidence, consisting of captures from the websites of 23andMe, Ancestry, CNN, and Living DNA establishes that the same entity commonly provides social networking services in the field of genetics that allow users to connect and share their genetic test results and provides biological research and analysis in the form of DNA testing and analysis under the same mark.  Thus, applicant’s and registrant’s 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).

 

Because the applied-for mark so resembles a registered mark that it is likely a potential consumer would be confused, mistaken, or deceived as to the source of the identical and/or related goods of the applicant and registrant, registration of the applied-for mark must be refused under Section 2(d) of the Trademark Act.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.  However, if applicant responds to the refusal, applicant must also respond to the requirements set forth below.

 

IDENTIFICATION OF GOODS AND SERVICES

 

The identification for software in International Class 9 is indefinite and too broad and must be clarified because the wording does not make clear the nature of the software and could identify goods and/or services in two international classes – as a product in International Class 9 or a service in International Class 42.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a).  The USPTO requires such specificity in identifying computer software in order for a trademark examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks.  See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1402.03(d).

 

Computer software is a product classified in International Class 9 if it is (1) recorded on media (such as CDs) or (2) downloadable and thus can be transferred or copied from a remote computer system for use on a long-term basis.  TMEP §1402.03(d).  However, on-line non-downloadable software is considered a computer service in International Class 42, unless it is non-downloadable game software provided online or for temporary use, which is classified in International Class 41.  See TMEP §§1402.03(d), 1402.11(a)(xii).

 

For example, the following are acceptable identifications for software in International Class 9:  “desktop publishing software,” “downloadable software for word processing,” and “downloadable mobile applications for managing bank accounts.”  Additionally, the following are acceptable identifications for software in International Class 42:  “providing temporary use of on-line non-downloadable software development tools” and “providing temporary use of non-downloadable cloud-based software for calculating energy costs.”  For assistance with software classification and identifications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.

 

Further, the wording “providing online computer databases featuring information based on aggregated results of genotyping” in the Class 42 identification of services is indefinite and must be clarified because it does not clearly identify that the information provided is scientific in nature.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Applicant may adopt the following identification, if accurate (suggestions in bold, items requiring further clarification in bold italics):

 

Class 9

 

{specify whether recorded or downloadable} computer software for recording, analysis, storage, manipulation and organization of genetic and molecular data; {specify whether recorded or downloadable} computer software for providing access to multiple databases that contain aggregated results of molecular biology testing and genotyping; Downloadable software in the nature of a mobile application for recording, analysis, storage, manipulation and organization of genetic and molecular data; Downloadable software in the nature of a mobile application for providing access to multiple databases that contain aggregated results of molecular biology testing and genotyping.

 

Class 10

 

Diagnostic test kits for scientific use comprised of devices for collecting DNA samples in the nature of DNA collecting tubes, collection envelopes, and instruction manuals for using diagnostic test kits, all used for the purpose of researching genealogical history, wellness assessment and gaining insight into how the body responds to micronutrients, nutrients, vitamins and supplements; vitamin and mineral supplements.

 

Class 42

 

Providing scientific analysis and informational reports based on the results of laboratory testing in the field of genetics, wellness assessment and the utility of micronutrients, nutrients, vitamins and supplements; providing online computer databases comprised of scientific information based on aggregated results of genotyping; application service provider featuring software for providing access to multiple databases that contain aggregated results of genotyping; application service provider featuring software for use in data management, data storage, data analysis, report generation, user identification, and membership identification, all in the fields of genetics and genetic testing; scientific research in the fields of genetics, genetic testing, genetic screening, genotyping, phenotyping, molecular analytics, and ancestry; providing online non-downloadable computer software for recording, analysis, storage, manipulation and organization of genetic and molecular data; providing online non-downloadable computer software for providing access to multiple databases that contain aggregated results of molecular biology testing and genotyping

 

Class 45

 

Online social networking services in the field of genetics; online social networking services that allows users to share and discuss genetic test results, including wellness assessments based on the genetic test results.

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  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.

 

RESPONSE GUIDELINES

 

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.  

 

 

 

/Cheryl D. Kluwe/

Examining Attorney

Law Office 126

(571) 270-3839

cheryl.kluwe@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 4/23/2019 FOR U.S. APPLICATION SERIAL NO. 88285116

 

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 4/23/2019 (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.