UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
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U.S. APPLICATION SERIAL NO. 88306991
MARK: OTTO
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: 98point6 Inc.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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: 5/3/2019
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.
The filing date of pending U.S. Application Serial Nos. 87225642, 87867723, 87789431, 87225648, and 87225618 precede applicant’s filing date. See attached referenced applications. If any of the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks. See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq. Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced applications.
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration Nos. 4946419, 2932497, 1841649, 3035447, 0935243, 5340935, 5340931, 4770824, and 4693800. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
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).
In this case, the applied-for mark is OTTO in standard character form. The marks in the cited registrations are OTTO in standard character form, OTTO in stylized form and OTO in stylized form. Stylization of the marks at issue will not avoid likelihood of confusion. A mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition. See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii). Thus, a mark presented in stylized characters and/or with a design element generally will not avoid likelihood of confusion with a mark in typed or standard characters because the word portion could be presented in the same manner of display. See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”).
To the extent the cited registrations are for the standard character mark OTTO, 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.
With respect to the cited registrations for OTTO in stylized form, when evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii). Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed. In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)). Stylization thus will not avoid likelihood of confusion, the marks share the identical literal component OTTO and are therefore confusingly similar.
With respect to the cited registrations for the mark OTO, the marks are highly similar in structure, sound, and appearance. There is no correct pronunciation of a mark because it is impossible to predict how the public will pronounce a particular mark. See Embarcadero Techs., Inc. v. RStudio, Inc., 105 USPQ2d 1825, 1835 (TTAB 2013) (quoting In re Viterra Inc., 671 F.3d 1358, 1367, 101 USPQ2d 1905, 1912 (Fed. Cir. 2012); In re The Belgrade Shoe Co., 411 F.2d 1352, 1353, 162 USPQ 227, 227 (C.C.P.A. 1969)); TMEP §1207.01(b)(iv). The marks in question could clearly be pronounced the same; such similarity in sound alone may be sufficient to support a finding that the marks are confusingly similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b)(iv).
Accordingly, the marks are found confusingly similar.
Comparison of the Goods and Services
The goods and 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 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 relevant goods and services identified in the application are:
International Class 009: Computer hardware and recorded software systems for voice command and recognition software, speech to text conversion; Computer hardware and recorded software systems for voice-enabled applications for personal information management; Computer hardware and recorded software systems for personal assistant software; Computer hardware and recorded software systems for wireless communication of for voice, audio, video, and data transmission; Computer hardware and recorded software systems for controlling stand-alone voice controlled information and personal assistant devices; Computer hardware and recorded software systems for personal information management; Computer hardware and recorded software systems for enabling users to analyze medical symptoms and historical health information; Computer hardware and recorded software systems for synchronous and asynchronous communication and for connection of physicians with their patients regardless of medical organization or geographic location; Computer hardware and recorded software systems for use as an application programming interface (API); Computer hardware and recorded software systems for handheld wireless devices, namely, software for controlling, integrating, operating, connecting, and managing voice controlled information devices, namely, cloud-connected and voice-controlled smart consumer electronic devices and electronic personal assistant devices
International Class 042: Application service provider (ASP) featuring software for use in controlling, integrating, operating, connecting, and managing voice controlled information devices, namely, cloud-connected and voice-controlled smart consumer electronic devices and electronic personal assistant devices; Application service provider featuring application programming interface (API) software for facilitating the development of voice service delivery and personal assistant capability tools in connection with consumer electronic devices; Providing customized computer searching services, namely, searching and retrieving information at the customer's specific request via the Internet; Software as a service (SAAS) services featuring software for voice command and recognition software, speech to text conversion software, voice-enabled software applications for personal information management; Software as a service (SAAS) services featuring software for personal assistant software; Software as a service (SAAS) services featuring software for enabling users to analyze medical symptoms and historical health information; Software as a service (SAAS) services featuring software for wireless communication software for voice, audio, video, and data transmission; Software as a service (SAAS) services featuring software for controlling stand-alone voice controlled information and personal assistant devices; Software as a service (SAAS) services featuring software for personal information management; Software as a service (SAAS) services featuring software for synchronous and asynchronous communication and for connection of physicians with their patients regardless of medical organization or geographic location; Software as a service (SAAS) services featuring software for accessing, monitoring, tracking, searching, saving, and sharing information on topics of medical information; Software as a service (SAAS) services featuring software for use as an application programming interface (API); Intelligent voice recognition services using cloud-based software technology
The services identified U.S. Registration Nos. 5340935 and 5340931 are for providing temporary use of non-downloadable software in field of dictation, speech to text conversion, and voice recognition in International Class 042. The goods identified in U.S. Registration Nos. 4770824 and 4693800 are for computer software for international calling and transmission of photographs, among others in International Class 009. The goods and services identified in U.S. Registration No. 4946419 are software in International Classes 009 and 042 “for assisting optometrists, ophthalmologists and eyewear providers with appointment scheduling, laboratory communications, practice management, patient measurement, patient history queries, insurance queries, and eyewear customization, pricing, ordering, and tracking,” among others.
With respect to U.S. Registration Nos. 5340935, 5340931, 4770824, 4946419 and 4693800, the application use(s) broad wording to describe the functions of applicant’s software, such as software “for voice command and recognition,” “to analyze medical symptoms and historical health information, “for synchronous and asynchronous communication and for connection of physicians with their patients regardless of medical organization or geographic location,” and “for wireless communication of for voice, audio, video, and data transmission,” which presumably encompasses all goods of the type described, including registrants’ more narrow identifications regarding software of the particular functions referenced above in International Classes 009 and 042. 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 in part. 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)).
The fact that the Office classifies goods or services in different classes does not establish that the goods and services are unrelated under Trademark Act Section 2(d). See TMEP §1207.01(d)(v). The determination concerning the proper classification of goods or services is a purely administrative determination unrelated to the determination of likelihood of confusion. Jean Patou, Inc. v. Theon, Inc., 9 F.3d 971, 975, 29 USPQ2d 1771, 1774 (Fed. Cir. 1993); Nat’l Football League v. Jasper Alliance Corp., 16 USPQ2d 1212, 1216 n.5 (TTAB 1990). These goods and services are highly similar and related.
As additional evidence of the relatedness of the goods and services referenced above, the attached Internet evidence, consisting of screenshots from a representative sampling of third party websites, establishes that the same entity produces and provides downloadable and cloud-based software that performs the same functions and markets the goods and services under the same mark. See attached screenshots from Adobe.com, Play.Google.com, Google.com, GSuite.Google.com, Products.Office.com. This evidence also shows that the relevant goods and services are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use and that the goods and services are similar or complementary in terms of purpose or function. Thus, applicant’s and registrant’s goods 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).
The goods identified in U.S. Registration Nos. 2932497, 1841649, 3035447, and 0935243, are various electronics such as audio headsets, earphones, microphones, electrical switches, microphones which pick up voice vibrations and convert them to electrical signals, among other electronics.
The application use(s) broad wording to describe applicant’s goods, such as “Computer hardware and recorded software systems for voice command and recognition software, speech to text conversion,” and “Computer hardware and recorded software systems for wireless communication of for voice, audio, video, and data transmission” which presumably encompasses all goods of the type described, including registrant’s more narrow identifications of items such as microphones and speakers, among others. 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 in part. 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)).
The attached Internet evidence, consisting of screenshots from a representative sampling of third party websites, establishes that provides the relevant goods and markets the goods under the same mark. In particular, this evidence demonstrates that the same entity commonly provides various hardware and computer peripherals and software related to data processing, recording, and reproduction, among others. See attached screenshots from Microsoft.com, Store.Google.com, Play.Google.com, Google.com, GSuite.Google.com, Amazon.com, and Samsung.com. This evidence also shows that the relevant goods and services are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use and that the goods and services are similar or complementary in terms of purpose or function. Thus, applicant’s and registrant’s goods 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).
The examining attorney further notes that 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).
The goods and services are similar and related. Likelihood of confusion exists, and registration is thus refused.
IDENTIFICATION OF GOODS AND SERVICES REQUIRES AMENDMENT
When identifying software in International Classes 009 and 042, applicant must specify whether the software is content- or field-specific, and applicant must also specify its content or field of use. See TMEP §1402.03(d). 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).
Applicant may adopt the following identification, if accurate:
International Class 009: Computer hardware and recorded
software systems for voice command and recognition software, and speech to text conversion; Computer hardware and recorded software systems for
voice-enabled applications for personal information management; Computer hardware and recorded software systems for that acts as a
personal assistant by {explain functions e.g., scheduling appointments, managing calendars, managing personal information…}; Computer hardware and recorded software systems for
wireless communication of for voice, audio, video, and data transmission; Computer hardware and recorded software systems for controlling stand-alone voice
controlled information and personal assistant devices; Computer hardware and recorded software systems for personal information management; Computer hardware and recorded software systems for
enabling users to analyze medical symptoms and historical health information; Computer hardware and recorded software systems for synchronous and asynchronous communication and for connection of
physicians with their patients regardless of medical organization or geographic location; Computer hardware and recorded software systems for use as an application programming interface (API);
Computer hardware and recorded software systems for handheld wireless devices, namely, software for controlling, integrating, operating, connecting, and managing voice controlled information devices,
namely, cloud-connected and voice-controlled smart consumer electronic devices and electronic personal assistant devices
International Class 042: Application service provider (ASP) featuring software for use in controlling, integrating, operating, connecting, and
managing voice controlled information devices, namely, cloud-connected and voice-controlled smart consumer electronic devices and electronic personal assistant devices; Application service provider
featuring application programming interface (API) software for facilitating the development of voice service delivery and personal assistant capability tools in connection with consumer electronic
devices; Providing customized computer searching services, namely, searching and retrieving information at the customer's specific request via the Internet; Software as a service (SAAS) services
featuring software for voice command and recognition software, speech to text conversion software, voice-enabled
software applications for personal information management; Software as a service (SAAS) services featuring software for that acts as a personal assistant by {explain functions e.g., scheduling appointments, managing calendars, managing personal information…} software; Software as a service (SAAS) services featuring software for enabling users to analyze medical symptoms and historical health information; Software as a service (SAAS)
services featuring software for wireless communications software for voice, audio, video, and data transmission; Software as a service (SAAS) services
featuring software for controlling stand-alone voice controlled information and personal assistant devices; Software as a service (SAAS) services featuring software for personal information
management; Software as a service (SAAS) services featuring software for synchronous and asynchronous communication and for connection of physicians with their patients regardless of medical
organization or geographic location; Software as a service (SAAS) services featuring software for accessing, monitoring, tracking, searching, saving, and sharing information on topics of medical
information; Software as a service (SAAS) services featuring software for use as an application programming interface (API); Intelligent voice recognition services using cloud-based software
technology
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.
REQUEST FOR INFORMATION
(1) Explain whether the wording in the mark “OTTO” has any meaning or significance in the trade or industry in which applicant’s goods and/or services are manufactured or provided, any meaning or significance as applied to applicant’s goods and/or services, or if such wording is a term of art within applicant’s industry.
(2) Explain whether the wording in the mark “OTTO” identifies a geographic place.
(3) Respond to the following questions:
(a) Explain whether “OTTO” identifies an individual associated with applicant.
(b) Explain whether “OTTO” has significance as an acronym.
(c) Explain whether “OTTO” is the surname of an individual associated with applicant.
See 37 C.F.R. §2.61(b); TMEP §814.
Failure to comply with a request for information is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.
Response Guidelines
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.
Respond online to this letter. Use the TEAS “Response to Office Action” online form to file a response.
Advisory Regarding Who May Sign Responses
Responses to Office actions must be properly signed. See 37 C.F.R. §§2.62(b), 2.193(e)(2); TMEP §§712, 712.01. If an applicant is not represented by an attorney, the response must be signed by the individual applicant or someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner). See 37 C.F.R. §2.193(e)(2)(ii); TMEP §§611.03(b), 611.06(b)-(h), 712.01. In the case of joint applicants, all must sign. 37 C.F.R. §2.193(e)(2)(ii); TMEP §611.06(a).
If an applicant is represented by an attorney authorized to practice before the USPTO, the attorney must sign the response. 37 C.F.R. §2.193(e)(2)(i); TMEP §§611.03(b), 712.01. The only attorneys who may sign responses and otherwise practice before the USPTO in trademark matters are (1) attorneys in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and U.S. commonwealths/territories; and (2) certain Canadian agents and/or attorneys. See 37 C.F.R. §§2.17(e), 11.14(a), (c); TMEP §602. If an applicant changes attorneys, the newly retained attorney may not sign responses until the applicant files a new power and/or revocation of attorney. See 37 C.F.R. §2.18(a)(7); TMEP §604.03.
For applications with multiple individual applicants or joint applicants, all must sign the response. 37 C.F.R. §2.193(e)(2)(ii); TMEP §611.06(a).
Applicant May Wish to Consult with Trademark Counsel
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.
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.
/Rachel E. Desjardins/
Examining Attorney
Trademark Law Office 123
Phone: (571) 270-0104
Email: Rachel.Desjardins@USPTO.gov
(Informal communications only – Do not respond to Office action via email.)
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.
