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: 5/14/2019
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.
Refusal-Likelihood of Confusion
Registration of the applied-for mark is refused because of a
likelihood of confusion with the marks in U.S. Registration Nos. 4853176; 4853177 and 5197876. 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 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. 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.
I. Similarity of the Marks
The registered marks are outlined below and are owned by the same registrant:
1. U.S. Registration No. 4853176 for the mark BIMBA Y LOLA and
design in the nature of a circle within a circle;
2. U.S. Registration No. 4853177 and U.S. Registration No.
5197876 for the mark BIMBA Y LOLA in stylized lettering.
The proposed mark is BIMBA in stylized letters. It is very likely to cause confusion with U.S. Registration Nos. 4853176; 4853177 and 5197876 because it is similar in sound,
appearance and commercial impression as a result of the term “BIMBA.” This term is a significant to the overall commercial impression of the registered marks and the
only literal element in the proposed mark.
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).
It is noted that U.S. Registration No. 4853176 includes a circle within a circle design and that U.S. Registration Nos. 4853177 and 5197876 are presented in stylized
lettering. Further, applicant’s mark is also presented in stylized lettering. However, these elements do not obviate the likelihood
of confusion in this case.
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)). In this case, the proposed mark is
very similar to the registered marks as a result of the term “BIMBA.”
II. Similarity of the Goods
The compared goods 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).
The goods identified in U.S. Registration Nos. 4853176 and 4853177, which are the basis for the refusal, are:
- International Class 9: Protective helmets; Goggles for sports; Carry bags for portable computers; Cases especially made for photographic apparatus
and instruments; Headphones; Eyeglasses; Snow eyeglasses; Wind eyeglasses; Eyeglass frames; Eyeglass chains; Sunglasses; Eyeglass cases; Portable telephones; Mobile phone pouch; Vehicle mobile phone
holder; Carry bags for tablet computers; Carry bags for PDAs; Pocket calculators; Global Positioning System (GPS) apparatus.
- International Class 14: Brooches; Necklaces; Bracelets; Rings; Earrings; Paste jewelry; Ankle bracelet; Charms; Jewelry ornaments; Jewelry; Key
chains as jewelry; Cuff links; Tie pins; Watches; Straps for wristwatches; Jewelry boxes; Ornamental pins; Precious metals; Precious stones; Medals.
- International Class 18: Wallets; Purses; Backpacks; Suitcases; Hand bags; Textile shopping bags; Briefcases; Cosmetic bags sold empty; Toiletry bags
sold empty; Bags for sports; Credit card wallets; Passport wallets; Pet accessories, namely, specially designed canvas, vinyl or leather bags attached to animal leashes for holding small items such
as keys, credit cards, money or disposable bags for disposing of pet waste; Umbrellas; Clothing for domestic pets; Collars for animals; Carry-all bags for pets; Pouch baby carriers; Leather luggage
tags; Leather.
- International Class 25: Clothing, namely, Pajamas, Bath robes, Bathing suits, Waistcoats, Sweaters, Shirts, Tee-shirts, Underwear, Suits, Dresses,
Skirts, Trousers, Tights, Leggings, Coats, Gabardines, Belts for clothing, Scarfs, Neckties, Stockings, Gloves, Hosiery, Lingerie, Loungewear, Swimwear, Jeans; Footwear, namely, Shoes, Sandals,
Boots; Headwear, namely, Headbands, Hats; Gymnastic and sports outfits, namely, leotards, tights, bras, caps and hats, pants, shirts, vests, tops, jackets and jerseys; Sports shoes.
- International Class 35: Wholesale and retail store services featuring clothing, watches, eyeglasses, jewelry, bags, and luggage; On-line wholesale
and retail store services featuring clothing, watches, eyeglasses, jewelry, bags, and luggage.
The goods identified in U.S. Registration No. 5197876 are:
- International Class 3: Bleaching preparations for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential
oils, cosmetics, hair lotions; dentifrices; abraders in the nature of skin abrasive preparations; Essential oils in the nature of almond essential oil; Essential oils in the nature of gaultheria
essential oil; jasmine oil for personal use; lavender oil; rose oil for cosmetic purposes; oil of turpentine for degreasing; oils for cleaning purposes; oils for perfumes and scents; oils for
toiletry purposes; essential oils of cedarwood; essential oils of lemon; essential oils; oils for cosmetic purposes; cosmetic preparations for slimming purposes; Adhesives for affixing false
eyelashes; adhesives for affixing false hair; adhesives for cosmetic purposes; breath freshening sprays; shaving preparations; drying agents for dishwashing machines; eau de cologne; lavender water;
perfume water; canned pressurized air for cleaning and dusting purposes; ammonia for cleaning purposes; smoothing preparations in the nature of laundry starch; starch for laundry purposes; starch
glaze for laundry purposes; perfumery in the nature of musk; essential oil of amber for perfume; laundry blueing; antistatic preparations for household purposes; antiperspirants; aromatics in the
nature of aromatic essential oils; Cake flavorings being essential oils; flavourings for beverages being essential oils; air fragrancing preparations; astringents for cosmetic purposes;
color-brightening chemicals for household purposes in the nature of laundry detergent; non-medicated lotions, namely, non-medicated body lotion and skin care lotion; Cosmetic preparations for baths;
lacquer-removing preparations; shoe polish; whitening preparations in the nature of tooth whitening gels; leather bleaching preparations in the nature of leather bleaching preparations for laundry
use; sachets for perfuming linen; Cleaning and shining preparations for plant leaves; shining preparations; lip gloss; Cosmetic sun-tanning preparations; furbishing preparations in the nature of
all-purpose cleaning preparations; hair waving preparations; silicon carbide for use as an abrasive; eyebrow cosmetics; volcanic ash for cleaning; non-slipping wax for floors; laundry wax; tailors'
wax; shoemakers' wax; wax for removing body hair; shoe wax; moustache wax; parquet floor wax; creams for leather; shampoo; dry shampoos; shampoos for pets; preservatives for leather in the nature of
leather preserving polishes; Emery paper impregnated with corundum; quillaia bark for washing; cosmetics; cosmetics for animals; skin whitening creams; Cosmetic creams; boot cream; polishing creams;
Cosmetic preparations for skincare; floor wax removers; scouring solutions; bleaching preparations for cosmetic purposes; depilatories; degreasers other than for use in manufacturing processes; scale
removing preparations for household purposes; make-up removing preparations; deodorants for pets; deodorants for human beings or for animals; Stone polishes containing diamantine; douching
preparations for personal sanitary or deodorant purposes; polish for furniture and flooring; dental rinses, non medicated; Badian flower essences for cosmetic purposes; bergamot oil; Essential oil in
the nature of mint plant essences for cosmetic purposes; ethereal essences; Extracts of flowers sold as a component of perfumed cosmetics; Bases for flower perfumes in the nature of flower perfume
oils, perfume made with flowers; fumigation preparations in the nature of air fragrancing preparations; dental bleaching gels; massage gels other than for medical purposes; Geraniol, namely,
essential oil made from geraniol and used for perfumes and scents; laundry glaze; greases for cosmetic purposes; cotton wool for cosmetic purposes; heliotropine, namely, perfume oils made from the
heliotrope flower, heliotrope flower essences for cosmetic purposes; Cosmetic dye in the nature of henna for cosmetic purposes; cotton sticks for cosmetic purposes; incense; ionone, namely, essential
oils made with ionone; shaving soap; almond soap; Soaps, namely, bar soaps, bath soaps, antibacterial soaps; antiperspirant soap; soap for foot perspiration; disinfectant soap; deodorant soap;
medicated soap; soap for brightening textile; petroleum jelly for cosmetic purposes; nail polish; hair spray; breath freshening strips; eyebrow pencils; almond milk for cosmetic purposes; cleansing
milk for toilet purposes; windscreen cleaning fluids; preparations for cleaning dentures; dry-cleaning preparations; polishing preparations; hair lotions; aftershave; lotions for cosmetic purposes;
scented wood; make-up; make-up preparations; mascara; cosmetic masks; mint for perfumery; Decorative transfer for cosmetic purposes; cosmetic kits in the nature of make-up kits comprised of lipstick,
lip gloss, eye shadow, blush, eyeliner, mascara; cloths impregnated with a detergent for cleaning; emery paper; polishing paper; wallpaper cleaning preparations; pastes for razor strops; soap,
namely, beauty soap, body cream soap; nail art stickers; perfumery; hydrogen peroxide for cosmetic purposes; cosmetic preparations for eye-lashes; false eyelashes; pumice stone for personal use; alum
stones; polishing stones; lipstick; color-removing preparations for hair; face powder; pomades for cosmetic purposes; pot-pourri; sun tan lotion; aloe vera preparations for cosmetic purposes; laundry
bleach; rust removers, namely, rust removing preparations; denture polishes; destainers, namely, stain removing preparations; jewellers' rouge; bleaching salts; bath salts, not for medical purposes;
washing soda, for cleaning; bleaching soda; fabric softeners for laundry use; talcum powder, for toilet use; emery cloth; glass cloth; Essential oils made from terpenes; Cosmetic dyes, namely, hair
dyes, color preparations for cosmetic purposes; Colorants for toiletry purposes, namely, hair colorants, cheek colors; hair dyes; beard dyes; cleaning chalk; tissues impregnated with cosmetic
lotions; Non-medicated toiletries; turpentine, for degreasing; tripoli stone for polishing; false nails; nail care preparations; joss sticks.
Applicant’s goods are:
- International Class 25: Footwear; headgear; shirts; dresses; tunics; kaftans; Maternity Dresses; Sleepwear; Robes; Pants; Saree;
Waistcoat; Scarves; Socks; Sweaters; Tops; Cardigans.
When analyzing an applicant’s and registrant’s goods
for similarity and relatedness, that determination is based on the description of the goods in the application and registration at issue, not on extrinsic evidence of actual use. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting
Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)).
In this case, the goods in the application and U.S. Registration Nos. 4853176 and 4853177 are identical with
respect to “footwear,” “shirts,” “dresses,” “scarves,” “pants,” “headgear,” “headwear” and “sweaters.” Therefore, it is presumed
that the channels of trade and classes of purchasers are the same for these goods. See Cai v. Diamond Hong, Inc., __ F.3d __, 27
USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)). Thus, applicant’s and registrant’s goods
are related.
Decisions regarding likelihood of confusion in the clothing field have
found many different types of apparel to be related goods. Cambridge Rubber Co. v. Cluett, Peabody & Co., 286 F.2d 623, 624, 128 USPQ 549, 550 (C.C.P.A. 1961) (women’s boots related
to men’s and boys’ underwear); Jockey Int’l, Inc. v. Mallory & Church Corp., 25 USPQ2d 1233, 1236 (TTAB 1992) (underwear related to neckties); In re Melville Corp., 18 USPQ2d 1386,
1388 (TTAB 1991) (women’s pants, blouses, shorts and jackets related to women’s shoes); In re Pix of Am., Inc., 225 USPQ 691, 691-92 (TTAB 1985) (women’s shoes related to outer shirts); In
re Mercedes Slacks, Ltd., 213 USPQ 397, 398-99 (TTAB 1982) (hosiery related to trousers); In re Cook United, Inc., 185 USPQ 444, 445 (TTAB 1975) (men’s suits, coats, and trousers related
to ladies’ pantyhose and hosiery); Esquire Sportswear Mfg. Co. v. Genesco Inc., 141 USPQ 400, 404 (TTAB 1964) (brassieres and girdles related to slacks for men and young men).
Registrant also identifies “Wholesale and retail store services featuring clothing, watches, eyeglasses, jewelry, bags, and
luggage; On-line wholesale and retail store services featuring clothing, watches, eyeglasses, jewelry, bags, and luggage” and applicant’s goods are related to these services since applicant’s goods
are clothing products, which are encompassed in registrant’s services. The use of similar marks on or in connection with both products and retail-store services has been held likely to cause confusion where the
evidence showed that the retail-store services featured the same type of products. See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1051 (Fed. Cir. 2018) (holding the use of similar marks for various clothing items, including athletic uniforms, and for retail shops featuring
sports team related clothing and apparel likely to cause confusion); In re House Beer, LLC, 114 USPQ2d
1073, 1078 (TTAB 2015) (holding the use of identical marks for beer and for retail store services featuring beer likely to cause confusion); In re Thomas, 79 USPQ2d 1021,
1023 (TTAB 2006) (holding the use of similar marks for jewelry and for retail-jewelry and mineral-store services likely to cause confusion); TMEP §1207.01(a)(ii).
The attached Internet evidence, consisting of third party advertising, establishes that the same
entity commonly produces clothing, footwear, retail store services featuring clothing, watches, eyeglasses, jewelry, bags, and luggage as well as eyewear, headwear, and perfumes, eau de cologne,
cosmetic and skin care products and markets the goods and services under the same mark. Thus, applicant’s goods 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).
Please see the attached evidence, which is outlined below:
- Evidence from http://www.landsend.com/shop/mens/S-xec-xe2?cm_re=lec-_-global-_-glbnv-men-_-20160316-_-txt featuring clothing, footwear, headwear and
retail store services all originating from the same source and travelling in the same channels of trade.
- Evidence from http://www.llbean.com/llb/shop/26?page=mens&csp=f&bc=12&sort_field=Relevance&start=1&viewCount=48&nav=ln-12; http://www.llbean.com/llb/shop/68602?page=women-s-polarized-bifocal-sunglasses&bc=12-26-596-804&feat=804-GN3&csp=f;
and http://www.llbean.com/llb/shop/50?page=luggage&nav=gnro-68602 featuring clothing, footwear, headwear, eyewear, bags, luggage
and retail store services all originating from the same source and travelling in the same channels of trade.
- Evidence from http://www.ralphlauren.com/men-accessories/double-black-eau-de-toilette/31294.html?cgid=men-accessories&dwvar31294_colorname=Black&webcat=Men%2FAccessories#prefn1=CategoryCode&prefv1=Fragrance&webcat=men-accessories&start=1&cgid=men-accessories
and http://www.ralphlauren.com/men?webcat=men featuring fragrances, clothing and bags as well as retail store services all
originating from the same source and travelling in the same channels of trade.
The overriding concern is not only to prevent buyer confusion as to the
source of the goods and services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer. See In
re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). Therefore, any doubt regarding a likelihood of confusion determination is resolved
in favor of the registrant. TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261,
1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).
Based upon the evidence, the proposed mark is refused registration under Section 2(d) of the Trademark Act.
Informalities
Although applicant’s mark has been refused registration, applicant may respond
to the refusal(s) by submitting evidence and arguments in support of registration.
If applicant responds to the refusal(s), applicant must
also respond to the requirement(s) set forth below.
Identification of Goods
The word “headgear” in the identification of goods must be clarified
because it is indefinite and too broad without further clarification. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. This word is indefinite because it does not make clear what the goods are. Further, this wording could identify goods in more than one
international class. For example, this word could include “sports helmets” in International Class 9, “orthodontic headgear” in International Class 10, “headwear” in
International Class 25, or “headwear for dolls” in International Class 28.
Applicant may (1) amend “headgear” to “headwear,” if accurate, and/or (2) retain “headgear,”
add “namely,” and then list the specific types of headgear items and classify the goods accordingly (e.g., headgear, namely, sports helmets in International Class 9; headgear, namely, orthodontic
headgear in International Class 10; and headgear, namely, sports caps in International Class 25). Given the overbroad nature of “headgear,” the wording after
“namely” must identify the goods with sufficient specificity that it would be considered definite and properly classified absent the term “headgear.”
In addition, the identification of goods is indefinite and must be clarified because the term “tops” lacks the required
specificity. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Finally, the term “waistcoat” appears to be misspelled and it appears
that applicant intended to identify the goods as “waistcoats.” Applicant may adopt the following identification, if accurate:
- International Class 25: Footwear; headgear, namely, {indicate goods by common commercial name, e.g.,
headwear}; shirts; dresses; tunics; kaftans; Maternity Dresses; Sleepwear; Robes; Pants; Saree; Waistcoats; Scarves; Socks; Sweaters; {applicant may replace
the current wording with “Tops as clothing”}; Cardigans.
See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
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.
Requirement for Information
To permit proper examination of the application, applicant must provide the
following information:
(1) Explain whether the wording in the mark “BIMBA” has any meaning or significance in the
industry in which the goods are manufactured, any meaning or significance as applied to applicant’s goods, or if such wording is a term of art within applicant’s industry.
(2) Explain whether this wording identifies a geographic place or has any meaning in a foreign
language.
(3) Submit an English translation of all foreign wording in a mark. If the wording does not have meaning in a foreign language, applicant should so specify.
The format for an English translation: “The English translation of “BIMBA” is
“{indicate translation}.”
The format for when there is no English translation or meaning of the transliteration: “The
wording “BIMBA” has no meaning in a foreign language.”
See 37 C.F.R. §§2.32(a)(9)-(a)(10), 2.61(b); TMEP §§809-809.03, 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.
Conclusion
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.
/Linda M. Estrada/
Trademark Examining Attorney
Law Office 104
(571) 272-9298
(571) 273-9104 Fax
Linda.Estrada@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.
