Notation to File

HYDRASENSE

Watershed Innovations

RE: Thank you & Follow-up Question (Serial # 88322332) Hi Heather, An amendment to allege use is NOT and would not count as a response to the Office Action. It also is not, by itself, responsive to the outstanding issue, which required either a good specimen or a change to the basis. If you want to establish use now with a new specimen and new dates of use and you want to respond to the Office action, you would need to: 1) FIRST submit a Request for Reconsideration (a response to a FINAL action) that amends the basis to Section 1(b), intent to use. Again, here is the link to the form: https://teas.uspto.gov/office/rfr/ 2) THEN you could file an amendment to allege use (AAU) that would effectively change the filing basis back to use in commerce under Section 1(a). In the AAU, you would provide the relevant dates of use and new specimen showing the mark in use in commerce as a trademark. The AAU form is here: ttps://teas.uspto.gov/aou/ If this is what you want to do, I would recommend making sure that the response has been entered and the basis changed in our electronic system before filing the AAU. That is because, in order to file an AAU, the basis in our electronic system has to show a 1(b), intent to use basis (if it does not show an intent to use basis, you’ll probably get an error message). Sometimes the basis will change quickly. Other times it takes our support staff a couple weeks to get the system updated. You can monitor the status here: http://tsdr.uspto.gov/ Just enter the application number and click “status.” Then click “Basis Information” and make sure it says “Yes” next to “Currently ITU.” The ONLY outstanding issue is the specimen issue. As the Office action points out, applicant can either 1) submit an acceptable specimen or 2) amend the application basis to Section 1(b), intent to use, to overcome the specimen refusal. It is up to the applicant/you guys if you want to submit an amendment to allege use now or if you want to wait until later in the registration process to submit an allegation of use. Here is a link to information on the trademark registration process: https://www.uspto.gov/trademarks-getting-started/trademark-process In particular, please see Step 5. You will see that, if you are able to submit an AAU now and the application is published as “use based” then, assuming the publication process went fine, you would receive a registration certificate afterward. If it is published based on “intent to use,” then you will later be required to submit an allegation of use demonstrating the mark is in use in commerce before you could receive a registration certificate. The question is really “When would you be most comfortable providing new dates of use and providing a new specimen showing the mark is in use commerce as a trademark for the goods?” In any case, to avoid abandonment, please just keep in mind that you need to timely submit a request for reconsideration (response to a final action). An AAU does not constitute a “response.”

NOTE TO THE FILE

SERIAL NUMBER: 88322332

DATE:    09/24/2019

NAME: mdall

NOTE:

Searched:
     Google
     Lexis/Nexis
     OneLook
     Wikipedia
     Acronym Finder                         Protest evidence reviewed
     Other:

Checked:
     Geographic significance
     Surname
     Translation
     ID with ID/CLASS mailbox

     Checked list of approved Canadian attorneys and agents

Discussed file with
Attorney/Applicant via:
        phone                               Left message with
        email                               Attorney/Applicant

     Requested Law Library search           Issued Examiner’s Amendment
     for:                                   and entered changes in TRADEUPS

        PRINT        DO NOT PRINT           Added design code in TRADEUPS
     Description of the mark
     Translation statement                  Re-imaged standard character
                                            drawing
     Negative translation statement
     Consent of living individual           Contacted TM MADRID ID/CLASS
                                            about misclassified definite ID
     Changed TRADEUPS to:

X   OTHER:

From: Lott, Maureen D.
Sent: Tuesday, September 24, 2019 6:13 PM
To: Heather Petersen <heather@hydrabarrier.com>
Subject: RE: Thank you & Follow-up Question (Serial # 88322332)

Hi Heather,

An amendment to allege use is NOT and would not count as a response to the Office Action. It also is not, by itself, responsive to the outstanding issue, which required either a good specimen or a change to the basis. If you want to establish use now with a new specimen and new dates of use and you want to respond to the Office action, you would need to:

1)      FIRST submit a Request for Reconsideration (a response to a FINAL action) that amends the basis to Section 1(b), intent to use. Again, here is the link to the form: http://teas.gov.uspto.report/office/rfr/

2)      THEN you could file an amendment to allege use (AAU) that would effectively change the filing basis back to use in commerce under Section 1(a). In the AAU, you would provide the relevant dates of use and new specimen showing the mark in use in commerce as a trademark. The AAU form is here: ttps://teas.gov.uspto.report/aou/

If this is what you want to do, I would recommend making sure that the response has been entered and the basis changed in our electronic system before filing the AAU. That is because, in order to file an AAU, the basis in our electronic system has to show a 1(b), intent to use basis (if it does not show an intent to use basis, you’ll probably get an error message).   Sometimes the basis will change quickly. Other times it takes our support staff a couple weeks to get the system updated.

You can monitor the status here: http://tsdr.gov.uspto.report/   Just enter the application number and click “status.” Then click “Basis Information” and make sure it says “Yes” next to “Currently ITU.”

The ONLY outstanding issue is the specimen issue. As the Office action points out, applicant can either 1) submit an acceptable specimen or 2) amend the application basis to Section 1(b), intent to use, to overcome the specimen refusal. It is up to the applicant/you guys if you want to submit an amendment to allege use now or if you want to wait until later in the registration process to submit an allegation of use.

Here is a link to information on the trademark registration process: http://www.gov.uspto.report/trademarks-getting-started/trademark-process In particular, please see Step 5. You will see that, if you are able to submit an AAU now and the application is published as “use based” then, assuming the publication process went fine, you would receive a registration certificate afterward. If it is published based on “intent to use,” then you will later be required to submit an allegation of use demonstrating the mark is in use in commerce before you could receive a registration certificate. The question is really “When would you be most comfortable providing new dates of use and providing a new specimen showing the mark is in use commerce as a trademark for the goods?”

In any case, to avoid abandonment, please just keep in mind that you need to timely submit a request for reconsideration (response to a final action). An AAU does not constitute a “response.”

I hope that helps.

Sincerely,

/Maureen/

Maureen Dall Lott

Trademark Examining Attorney, Law Office 105

U.S. Patent and Trademark Office

maureen.lott@uspto.gov

571-272-9714

From: Heather Petersen <heather@hydrabarrier.com>
Sent: Tuesday, September 24, 2019 3:59 PM
To: Lott, Maureen D. <Maureen.Lott@USPTO.GOV>
Subject: Re: Thank you & Follow-up Question (Serial # 88322332)

Hi Maureen,

Thanks for the additional information - this is very helpful.

If we were to file the Amendment to Allege Use/Allegation of Use form (http://teas.gov.uspto.report/aou/) as a next step, can you confirm that would be a complete and appropriate next step with no other companion forms required? I know you can't guarantee an outcome, just want to make sure that this would be the one form that would be required and that it could stand alone as a submission (i.e we aren't missing additional forms that would be required as a next step).

Thanks for helping us navigate this! There are a lot of forms and steps, just want to be thorough.

Thanks again,

Heather

On Tue, Sep 24, 2019 at 11:38 AM Lott, Maureen D. <Maureen.Lott@uspto.gov> wrote:

Hi Heather,

It is up to you how you would like to proceed. For ethical reasons, I cannot provide legal advice (and you may wish to talk with an attorney unrelated to the USPTO about it). However, here is some general information that may help aid your decision.

A.      FEES:

A new application will cost between $225-400 depending on which application form you use whereas the amendment to allege use/statement of use form that will need filed in the present matter will cost only $100.

B.      FILING DATE/CONFLICTING MARKS:

If you a file a new application, the filing date will be later than the current application’s filing date, and it would obviously take months longer before it might register. With a new application, a new search of the Office records for conflicting marks also will need to be done along with a brand new review of the entire application (probably by a different examining attorney). To aid you in your decision, you may want to do a search of the Office registration/application records to see if any potential conflicting marks have been filed since you filed your original application. You can access the trademark application/registration database here: http://www.gov.uspto.report/trademarks-application-process/search-trademark-database .

C.      FORMS:

New application forms can be found here: http://www.gov.uspto.report/trademarks-application-process/filing-online/initial-application-forms

Here is a link to a Request for Reconsideration form (response to final action form where you could change the basis to Section 1(b), intent to use): http://teas.gov.uspto.report/office/rfr/

Here is a link to the Amendment to Allege Use/Allegation of Use form (where you could provide new dates of use and a new specimen/example of the mark in use in commerce with the goods): http://teas.gov.uspto.report/aou/

I hope that helps.

Sincerely,

/Maureen/

Maureen Dall Lott

Trademark Examining Attorney, Law Office 105

U.S. Patent and Trademark Office

maureen.lott@uspto.gov

571-272-9714

From: Heather Petersen <heather@hydrabarrier.com>
Sent: Tuesday, September 24, 2019 2:19 PM
To: Lott, Maureen D. <Maureen.Lott@USPTO.GOV>
Subject: Thank you & Follow-up Question (Serial # 88322332)

Hi Maureen,

Thanks again for your time this morning. It was really helpful.

I had a chance to talk to the team and we were wondering: is there any drawback to us just creating a brand new application for HydraSense ((Serial # 88322332)? It seems like the cost might be about the same and that it might be simpler to start anew, but we might be missing something.

Thanks so much,

Heather

--

Regards,

Heather Petersen

Watershed Innovations

www.watershedinnovations.net

C: +1 (408) 569-7989