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:  July 30, 2020

 

 

The examining attorney apologizes for not catching the issue below in the previous action, and for any inconvenience incurred due to such oversight.

 

Introduction

 

This Office action is in response to applicant’s communication filed on July 9, 2020.

 

In a previous Office action dated January 9, 2020, the trademark examining attorney required applicant to satisfy the following requirement:  amend the identification of goods and services.

 

Based on applicant’s response, the trademark examining attorney notes that applicant did as requested.  However, upon reviewing the mark as a whole for publication, the examining attorney found that nowhere in the foreign certificate of registration upon which applicant’s domestic registration would be based is language regarding “distribution.” 

 

As such, the trademark examining attorney now makes FINAL the requirement in the summary of issues below.  See 37 C.F.R. §2.63(b); TMEP §714.04.  All previous arguments and evidence, where applicable, are incorporated by reference herein.

 

Summary of Issues Applicant Must Address:

• Identification of Services

 

 

Identification of Services

 

Particular wording in the U.S. application’s identification of services is not acceptable because it exceeds the scope of the services in the foreign registration.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.06 et seq., 1402.07.  For a U.S. application based on Trademark Act Section 44, an applicant is required to list only services that are within the scope of the services in the foreign registration.  37 C.F.R. §2.32(a)(6); TMEP §§1012, 1402.01(b).  Therefore, this wording is not considered part of the identification of services in the U.S. application, and the remaining wording in the identification is operative for purposes of future amendment.  See TMEP §1402.01(b); cf. TMEP §1402.07(d).

 

In this case, the U.S. application identifies the particular services as follows:  “distribution…of objects in connection with.” 

 

However, the foreign registration identifies the following services:  only “rental of.”

 

These services in the U.S. application exceed the scope of the services in the foreign registration because rental is a type of distribution, therefore, distribution widens the scope, as there can be numerous other types of distribution. 

 

Therefore, applicant may respond by satisfying one of the following:

 

(1)       Amending the identification of services in the U.S. application to correspond to the services in the foreign registration, ensuring that all services beyond the scope of the foreign registration are deleted from the U.S. application; or

 

(2)       Substituting a basis under Section 1(a) or 1(b) for those services in the U.S. application that are beyond the scope of the foreign registration.  An applicant may assert more than one basis in an application (except Section 1(a) and 1(b) may not be asserted for the same services), provided all requirements are satisfied for each claimed basis.

 

See 15 U.S.C. §§1051(a)-(b), 1126; 37 C.F.R. §§2.32(a)(6), 2.34(b), 2.35(b); Marmark Ltd. v. Nutrexpa S.A., 12 USPQ2d 1843, 1845 (TTAB 1989); TMEP §§806.02, 806.03(h), 1402.01(b). 

 

Additionally, applicant may respond by arguing that these services are within the scope of the foreign registration and should remain in the U.S. application.

 

 

Applicant may substitute the following wording, if accurate: 

 

Class 9: no change

 

Class 16: no change

 

Class 35 must be deleted, as it is based on the wording “distribution”

 

Class 40: no change

 

Class 41: no change

 

Class 42: no change.

 

 

Applicant may amend the identification to clarify or limit the services, but not to broaden or expand the 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 services may not later be reinserted.  See TMEP §1402.07(e).  Additionally, for U.S. applications filed under Trademark Act Section 44(e), the scope of the identification for purposes of permissible amendments may not exceed the scope of the goods and services identified in the foreign registration.  37 C.F.R. §2.32(a)(6); Marmark, Ltd. v. Nutrexpa, S.A., 12 USPQ2d 1843, 1845 (TTAB 1989) (citing In re Löwenbräu München, 175 USPQ 178, 181 (TTAB 1972)); TMEP §§1012, 1402.01(b).

 

 

 

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.

 

Responding to this Action

 

If applicant does not timely respond to this Office action, the following class will be deleted from the application: 35.  See 37 C.F.R. §2.65(a); TMEP §718.02(a). 

 

In such case, the application will then proceed with the following classes only:  9, 16, 40, and 42.  See TMEP §718.02(a).

Please call or email the assigned trademark examining attorney with questions about this Office action. 

 

 

 

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

 

 

/Leslee A. Friedman/

Leslee A. Friedman

Trademark Examining Attorney

Office 120

leslee.friedman@uspto.gov

(571) 272 - 5278

 

 

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 July 30, 2020 for

U.S. Trademark Application Serial No. 88290745

 

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. 

 

 

/Leslee A. Friedman/

Leslee A. Friedman

Trademark Examining Attorney

Office 120

leslee.friedman@uspto.gov

(571) 272 - 5278

 

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 July 30, 2020, 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.”