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: 5/8/2019

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issues below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

SUMMARY OF ISSUES:

 

• Partial Refusal under Section 2(d) of the Trademark Act – Likelihood of Confusion with the Mark in U.S. Registration No. 5004848
• Refusal under Sections 1, 2, & 45 of the Trademark Act – Failure to Function as a Trademark for Sound Recordings – Name of Performing Artist
• Identification and Classification of the Services
• Multiple Class Application Requirements
• Name of Individual Inquiry  

 

PARTIAL REFUSAL UNDER SECTION 2(d) – LIKELIHOOD OF CONFUSION WITH THE MARK IN U.S. REGISTRATION NO. 5004848

 

THIS PARTIAL REFUSAL APPLIES ONLY TO THE SERVICES SPECIFIED THEREIN

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 5004848.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registration.  Applicant’s mark is “OFFSET” in standard characters for Entertainment services in the nature of live and recorded musical performances by a performer. Audio and video recordings featuring music and artistic performances; Digital music downloadable from the Internet; Musical sound recordings; Prerecorded audio tapes featuring music; Prerecorded video cassettes featuring music; Prerecorded video tapes featuring music; Compact discs featuring music; Downloadable MP3 files and MP3 recordings featuring music; Electronic publications, namely, books, electronic magazines and newsletters featuring music recorded on computer media; Pre-recorded DVDs featuring music. 

 

The registered mark in U.S. Registration No. 5004848 is “OFFSET” in standard characters for non-downloadable electronic publications in the nature of magazines and newsletters featuring stories, articles, photography and advertising pertaining to international automotive trends, fashion and culture.

 

The refusal is made as to applicant’s electronic publications, namely, books, electronic magazines and newsletters featuring music recorded on computer media only.

 

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.

 

Based on Section 2(d) of the Trademark Act, the elements of the test for likelihood of confusion are:

1)     Whether the marks are confusingly similar; and

2)     Whether the goods are closely related. 

 

Similarity of the Marks

 

In a likelihood of confusion determination, the marks in their entireties are compared for similarities in appearance, sound, connotation, and commercial impression.  In re i.am.symbolic, llc, 866 F.3d 1315, 1323, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017); 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)); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b)-(b)(v). 

 

In the present case, applicant’s mark is “OFFSET” in standard characters and registrant’s mark is “OFFSET” in standard characters.  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 and registrant’s respective services.  Id.

 

Therefore, the marks are confusingly similar. 

 

Relatedness of the Services

 

The goods 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).

 

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)).  

 

Applicant’s mark, in relevant part, is for electronic publications, namely, books, electronic magazines and newsletters featuring music recorded on computer media. 

 

The registered mark in U.S. Registration No. 5004848 is “OFFSET” in standard characters for non-downloadable electronic publications in the nature of magazines and newsletters featuring stories, articles, photography and advertising pertaining to international automotive trends, fashion and culture.

 

In this case, the registration uses broad wording to describe non-downloadable electronic publications in the nature of magazines and newsletters featuring stories, articles, photography and advertising pertaining to…culture, which presumably encompasses all services of the type described, including applicant’s more narrow “electronic publications, namely…electronic magazines and newsletters featuring music recorded on computer media”.  See attached evidence from LiveScience (www.livescience.com) (“Culture encompasses religion, food, what we wear, how we wear it, our language, marriage, music…”); see also 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)).

 

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 and registrant’s goods and/or services are related.

 

Furthermore, the attached evidence from Lincoln Public Library (www.lincolnpl.org) and New York Public Library (www.nypl.org) establishes that applicant’s electronic publications, namely, books and registrant’s services are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use.  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).  For example, Lincoln Public Library loans consumers “digital books, magazines, audiobooks, music & more”.  Similarly, New York Public Library provides “popular e-books, audiobooks, and magazines” and “accessible e-books”. 

 

In sum, applicant’s and registrant’s services are related because the registration uses broad wording to describe non-downloadable electronic publications in the nature of magazine and newsletters, which presumably encompasses all services of the type described, including applicant’s more narrow electronic magazines and newsletters, and applicant and registrant’s services are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use.  Thus, applicant and registrant’s services are considered related for likelihood of confusion purposes. 

 

Because the marks are identical and applicant and registrant’s services are highly related, purchasers encountering these services are likely to believe, mistakenly, that they emanate from a common source.  Accordingly, registration is refused because a likelihood of confusion exists 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.

 

Applicant should note the following additional grounds for refusal.

 

Refusal under Sections 1, 2, & 45 of the Trademark Act – Failure to Function as a Trademark for Sound Recordings – Name of Performing Artist

 

Registration is refused because the applied-for mark, as used on the specimen of record, merely identifies the name of a featured performer on a sound recording; it does not function as a trademark to indicate the source of applicant’s goods and to identify and distinguish them from others.  Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051-1052, 1127; see In re Polar Music Int’l AB, 714 F.2d 1567, 1572, 221 USPQ 315, 318 (Fed. Cir. 1983); In re Arnold, 105 USPQ2d 1953, 1957 (TTAB 2013).  Sound recordings include musical and other performances presented in recorded or electronic form.  See TMEP §1202.09(a).

 

Applicant may respond to this refusal by satisfying one of the following:

 

            (1) Submitting evidence that (a) the name is used on a series of sound recordings, and (b) the name is promoted and recognized by others as the source of the series of sound recordings.  See In re Arnold, 105 USPQ2d at 1958; TMEP §1202.09(a)-(a)(ii)(A).  Evidence of a series includes copies or photographs of at least two different CD covers or similar packaging for recorded works that show the name sought to be registered.  TMEP §1202.09(a)(i); see In re Polar Music Int’l AB, 714 F.2d at 1572, 221 USPQ at 318.  Evidence that the name is promoted and recognized by others as a source of the series includes advertising that promotes the name as the source of the series, third-party reviews showing use of the name by others to refer to the series, and/or declarations from the sound recording industry, retailers, and purchasers showing recognition of the name as an indicator of the source of a series of recordings.  TMEP §1202.09(a)(ii)(A); cf. In re First Draft, Inc., 76 USPQ2d 1183, 1191 (TTAB 2005); In re Scholastic, Inc., 23 USPQ2d 1774, 1777-78 (TTAB 1992).

 

            (2) Submitting evidence that (a) the name is used on a series of sound recordings, and (b) the performer controls the quality of the recordings and controls the use of the name, such that the name has come to represent an assurance of quality to the public.  See In re Polar Music Int’l AB, 714 F.2d at 1572, 221 USPQ at 318; In re Arnold, 105 USPQ2d at 1958; TMEP §1202.09(a)-(a)(ii), (a)(ii)(B).  Evidence of a series includes copies or photographs of at least two different CD covers or similar packaging for recorded works that show the name sought to be registered.  TMEP §1202.09(a)(i); see In re Polar Music Int’l AB, 714 F.2d at 1572, 221 USPQ at 318.  Evidence of control over the quality of the recordings and use of the name includes licensing contracts or similar documentation.  TMEP §1202.09(a)(ii)(B); see In re Polar Music Int’l AB, 714 F.2d at 1568-72, 221 USPQ at 316-18.  However, if the sound recordings are recorded directly under applicant’s control, applicant may submit solely as evidence of control the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “The applicant produces the goods and controls their quality.”  TMEP §1202.09(a)(ii)(B); see 37 C.F.R. §2.193(e)(1).

 

            (3) Amending the application to seek registration on the Supplemental Register.  Trademark Act Section 23, 15 U.S.C. §1091; see 37 C.F.R. §§2.47, 2.75(a); TMEP §§816, 1202.09(a).

 

If applicant cannot satisfy one of the above requirements, applicant may amend the application from a use in commerce basis under Trademark Act Section 1(a) to an intent to use basis under Section 1(b), and the refusal will be withdrawn.  See TMEP §806.03(c).  However, if applicant amends the basis to Section 1(b), registration will not be granted until applicant later amends the application back to use in commerce by filing an acceptable allegation of use along with satisfying one of the above requirements.  See 15 U.S.C. §1051(c), (d); 37 C.F.R. §§2.76, 2.88; TMEP §1103.  If the same specimen is submitted with an allegation of use, and applicant does not either provide the additional evidence described above or amend to the Supplemental Register, the same refusal will issue.

 

To amend to Section 1(b), applicant must submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “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 filing date of the application.”  37 C.F.R. §2.34(a)(2); TMEP §806.01(b); see 15 U.S.C. §1051(b); 37 C.F.R. §§2.35(b)(1), 2.193(e)(1).

 

IDENTIFICATION AND CLASSIFICATION OF SERVICES IN INTERNATIONAL CLASS 41

 

As-filed, the identification of services in International Class 41 appears as follows:

 

International Class 41: Entertainment services in the nature of live and recorded musical performances by a performer. Audio and video recordings featuring music and artistic performances; Digital music downloadable from the Internet; Musical sound recordings; Prerecorded audio tapes featuring music; Prerecorded video cassettes featuring music; Prerecorded video tapes featuring music; Compact discs featuring music; Downloadable MP3 files and MP3 recordings featuring music; Electronic publications, namely, books, electronic magazines and newsletters featuring music recorded on computer media; Pre-recorded DVDs featuring music

 

Applicant must clarify the above-bolded wording in the identification of services in International Class 41 because it is indefinite, too broad and/or misclassified.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03, 1402.03(c).  In particular, the wording “and recorded musical performances by a performer” is indefinite because it does not appear that the wording identifies an entertainment service.  Indeed, it is unclear how a performer could perform a recorded musical performance.  Further clarification is needed in order to demonstrate how this language recites a service.  Additionally, the term “performer” should be further clarified to indicate the type of performer (e.g., musical band, singer, etc.). 

 

The phrases “audio and video recordings featuring music and artistic performances”, “digital music downloadable from the internet”, “musical sound recordings”, “Prerecorded audio tapes featuring music”, “Prerecorded video cassettes featuring music”, “Prerecorded video tapes featuring music”, “Compact discs featuring music”, “Downloadable MP3 files and MP3 recordings featuring music”, and “Pre-recorded DVDs featuring music” are all misclassified.  Indeed, the correct classification for these goods is in International Class 9. 

 

The phrase “electronic publications, namely, books, electronic magazines and newsletters featuring music recorded on computer media” is also indefinite and overly broad.  The phrase is indefinite and overly broad because it is unclear whether it encompasses downloadable electronic publications, which are classified in International Class 9 or non-downloadable electronic publications, which are classified in International Class 41.  The term “music recorded on computer media” is also indefinite in the context of non-downloadable electronic publications because it is unclear how the non-downloadable publications could feature music recorded on computer media. 

 

Applicant must also correct the punctuation in the identification to clarify the individual items in the list of goods and/or services.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01(a).  Proper punctuation in identifications is necessary to delineate explicitly each product or service within a list and to avoid ambiguity.  Commas, semicolons, and apostrophes are the only punctuation that should be used in an identification of goods and/or services.  TMEP §1402.01(a).  An applicant should not use colons, periods, exclamation points, and question marks in an identification.  Id.  In addition, applicants should not use symbols in the identification such as asterisks (*), at symbols (@), or carets.  Id.

 

In general, commas should be used in an identification (1) to separate a series of related items identified within a particular category of goods or services, (2) before and after “namely,” and (3) between each item in a list of goods or services following “namely” (e.g., personal care products, namely, body lotion, bar soap, shampoo).  Id.  Semicolons generally should be used to separate a series of distinct categories of goods or services within an international class (e.g., personal care products, namely, body lotion; deodorizers for pets; glass cleaners).  Id. 

 

Applicant may substitute the following wording, if accurate.  Suggested changes are shown in bold, and items the applicant must clarify are bracketed in italics.  Items to be deleted are noted with strikethrough. 

 

International Class 9: Audio and video recordings featuring music and artistic performances; Digital music downloadable from the Internet; musical sound recordings; Prerecorded audio tapes featuring music; Prerecorded video cassettes featuring music; Prerecorded video tapes featuring music; Compact discs featuring music; Downloadable MP3 files and MP3 recordings featuring music; Pre-recorded DVDs featuring music; downloadable electronic publications in the nature of books, electronic magazines and newsletters featuring music recorded on computer media

 

International Class 41: Entertainment services in the nature of live and recorded musical performances by a performer, namely, a {insert type of performer, e.g., musical band, etc.}.; Audio and video recordings featuring music and artistic performances; Digital music downloadable from the Internet; Musical sound recordings; Prerecorded audio tapes featuring music; Prerecorded video cassettes featuring music; Prerecorded video tapes featuring music; Compact discs featuring music; Downloadable MP3 files and MP3 recordings featuring music; non-downloadable eElectronic publications, namely, books, electronic magazines and newsletters featuring music recorded on computer media; Pre-recorded DVDs featuring music

 

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.

 

MULTIPLE CLASS APPLICATION REQUIREMENTS

 

The application references goods and/or services based on use in commerce in more than one international class; therefore, applicant must satisfy all the requirements below for each international class:

 

(1)       List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).

 

(2)       Submit a filing fee for each international class not covered by the fee already paid (view the USPTO’s current fee schedule).  Specifically, the application identifies goods and/or services based on use in commerce that are classified in at least 2 classes; however, applicant submitted a fee sufficient for only 1 class.  Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.

 

(3)       Submit verified dates of first use of the mark anywhere and in commerce for each international class.  See more information about verified dates of use.

 

(4)       Submit a specimen for each international class.  The current specimen is not acceptable for any international class.  See more information about specimens.

 

            Examples of specimens for goods include tags, labels, instruction manuals, containers, and photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale.  Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods.  

 

            Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and website printouts that show the mark used in the actual sale, rendering, or advertising of the services.  

 

(5)       Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.”  See more information about verification.

 

See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).

 

See an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

NAME OF INDIVIDUAL INQUIRY

 

Applicant must clarify whether the name OFFSET in the mark identifies a particular living individual.  See 37 C.F.R. §2.61(b); TMEP §§813, 1206.03.  In this case, the application neither specifies whether the name in the mark identifies a particular living individual nor includes a written consent.  See TMEP §§813.01(a)-(b), 1206.04(a), 1206.05.

 

To register a mark that consists of or comprises the name of a particular living individual, including a first name, pseudonym, stage name, or nickname, an applicant must provide a written consent personally signed by the named individual.  15 U.S.C. §1052(c); TMEP §§813, 1206.04(a).  

 

Accordingly, if the name in the mark does not identify a particular living individual, applicant must submit a statement to that effect (e.g., “The name shown in the mark does not identify a particular living individual.”). 

 

However, if the name in the mark does identify a particular living individual, applicant must submit both of the following: 

 

(1)       The following statement:  “The name(s) shown in the mark identifies a living individual(s) whose consent(s) to register is made of record.”  If the name is a pseudonym, stage name, or nickname, applicant must provide the following statement:  “OFFSET” identifies Kiari Kendrell Cephus, a living individual whose consent is of record.”

 

(2)       A written consent, personally signed by the named individual(s), as follows:  “I, Kiari Kendrell Cephus, consent to the use and registration of my name, OFFSET, as a trademark and/or service mark with the USPTO.”

 

For an overview of the requirements pertaining to names appearing in marks, and instructions on how to satisfy this requirement online using the Trademark Electronic Application System (TEAS) response form, please go to http://www.gov.uspto.report/trademarks/law/consent.jsp.

 

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. 

 

HOW TO RESPOND TO THIS OFFICE ACTION

 

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.  

 

 

 

Sarah Hasford

/Sarah P. Hasford/

Trademark Examiner

Law Office 126

(571) 270-3632

sarah.hasford@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 5/8/2019 FOR U.S. APPLICATION SERIAL NO. 88309925

 

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 5/8/2019 (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.