Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

NONFINAL OFFICE ACTION

 

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:  November 01, 2019

 

INTRODUCTION

 

This Office action is supplemental to and supersedes the previous Office action issued on April 17, 2019 in connection with this application.  The assigned trademark examining attorney inadvertently omitted a requirement relevant to the mark in the subject application.  See TMEP §§706, 711.02.  Specifically, the requirement is necessary, because the mark differs on the application drawing and foreign certificate.

 

The trademark examining attorney apologizes for any inconvenience caused by the delay in raising this issue(s). 

 

Applicant must address all issue(s) raised in this Office action.  The issue raised in the previous April 17, 2019 Office action is as follow and has been obviated by the cancelation of the duplicate registration:  Refusal – Current Application is a Duplicate of a Registration.  See TMEP §713.02. 

 

The following is a SUMMARY OF ISSUES that applicant must address:

 

• NEW ISSUE:  Requirement – Mark on the Drawing and Foreign Registration Differ

 

Applicant must respond to all issues raised in this Office action within six (6) months of the date of issuance of this Office action.  37 C.F.R. §2.62(a); see TMEP §711.02.  If applicant does not respond within this time limit, the application will be abandoned.  37 C.F.R. §2.65(a).

 

REQUIREMENT – MARK ON THE DRAWING AND FOREIGN REGISTRATION DIFFER

 

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

 

In this case, the U.S. drawing displays the mark as “TEMASEK CARES” in stylized form.  However, the foreign registration displays the mark as 2 copies of the U.S. drawing, 1 above the other.  The mark in the U.S. drawing does not match the mark on the foreign registration, because the U.S. drawing only contains 1 copy of the mark. 

 

Applicant may respond by satisfying one of the following:

 

(1)        Submit a new drawing of the mark that matches the foreign registration and an amendment of the description that agrees with the new drawing.  See 37 C.F.R. §§2.37, 2.72(c); TMEP §§807.12(b), 1011.03.  The following amended description is suggested, if accurate:  “The mark consists of the words "TEMASEK CARES" with the letter "T" and the letter "C" in stylized form over the words "TEMASEK CARES" with the letter "T" and the letter "C" in stylized form.”  Applicant may amend the mark in the drawing to match the mark in the foreign registration but may not make any other changes or amendments that would materially alter the drawing of the mark.  See 37 C.F.R. §2.72(c); TMEP §§807.14 et seq., 1011.03. 

 

(2)        Submit a request to amend the filing basis to Trademark Act Section 1(a) or 1(b), if applicant can satisfy the requirements for the chosen basis.  See 15 U.S.C. §1051(a)-(b); 37 C.F.R. §2.35(b)(1); TMEP §806.03.  A Section 1 basis does not require applicant to submit a foreign registration but requires evidence of applicant’s mark in use in commerce.  See 15 U.S.C. §1051(a)-(b); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a), 2.76(b)(2), 2.88(b)(2); TMEP §904.

 

For more information about drawings, amending the basis, and instructions on how to satisfy these response options online using the Trademark Electronic Application System (TEAS) response form, see the Drawing webpage.

 

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.  

 

 

How to respond.  Click to file a response to this nonfinal Office action  

 

 

/Kerry A. Nicholson/

Trademark Examining Attorney

Law Office 120

Phone: (571) 272-5159

kerry.nicholson@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on November 01, 2019 for

U.S. Trademark Application Serial No. 88290104

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Kerry A. Nicholson/

Trademark Examining Attorney

Law Office 120

Phone: (571) 272-5159

kerry.nicholson@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from November 01, 2019, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond.

 

 

 

GENERAL GUIDANCE

·         Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·         Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·         Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”