Notation to File

HYDRASENSE

Watershed Innovations

Re: Thank you & Follow-up Question (Serial # 88322332)   Thank you, Maureen! I filed the response (requesting amending the basis to Section 1(b)) this morning and can take it from here. Really appreciate the support.    - Heather    On Wed, Sep 25, 2019 at 10:56 AM Lott, Maureen D. <Maureen.Lott@uspto.gov> wrote: You are correct.  You seem to understand that correctly.   To simply provide a new specimen in a request for reconsideration/response (and NOT have to file an allegation of use), you would need to submit a specimen that was in use as of the application filing date.   If you don’t have a good specimen that was in use as of the application filing date, then you have the option to change the basis to intent to use (using the request for reconsideration form).  A change to the basis alone would satisfy the refusal/requirement.   If you are going to change the basis, then the thing to remember is that you will eventually need to file an allegation of use to amend the application back to a use-based application, to provide new dates of use, and a new specimen that was in use as of the filing the allegation of use (not the application date).   To obtain a registration, a mark has to be in use.   So, if you amend the basis, then you have a choice as to when you amend the application back to a use-based application.  You can either file an Amendment to Allege Use before publication (right after you submit the request for reconsideration) OR you can file a Statement of Use after publication (“Amendment to Allege Use” and “Statement of Use” are both names for allegations of use; the names just differ to indicate when in the registration process they are submitted).   Assuming you cannot provide a good specimen that was in use as of the application filing date and you amend the basis to 1(b), intent to use, your options are:   1)      Right now, submit only a request for reconsideration amending the basis to Section 1(b), intent to use (in which case you will later in the process be asked to submit an allegation of use). 2)      Submit BOTH 1) a request for reconsideration to change the basis to 1(b) AND 2) an amendment to allege use changing the application back to a use based application and providing new dates of use and a new specimen that was used as of the date the allegation of use is filed.   If you go with No. 2, please see my prior comments about watching our database to see when the basis is changed to 1(b) before you submit the allegation of use.      I hope that helps.  If not, you may wish to speak with a trademark attorney not associated with the USPTO who could provide more specific legal advice as to your particular situation.                 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: Wednesday, September 25, 2019 1:27 PM To: Lott, Maureen D. <Maureen.Lott@USPTO.GOV> Subject: Re: Thank you & Follow-up Question (Serial # 88322332)   Hi Maureen, Thank you! When we received the original office action, I understood that we could only submit a new specimen if it was being used in commerce at the time of the original filing.  We are ready with a new specimen that has been used since 9/13/19 but this is after the original filing. Therefore, I ruled out submitting a new specimen as a next step. Maybe I am misunderstanding these instructions?    Thanks for any clarification you can provide,   Heather   On Tue, Sep 24, 2019 at 3:13 PM Lott, Maureen D. <Maureen.Lott@uspto.gov> wrote: 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.”   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 (https://teas.uspto.gov/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).   

NOTE TO THE FILE

SERIAL NUMBER:            88322332

DATE:                                09/27/2019

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: Heather Petersen <heather@hydrabarrier.com>
Sent: Thursday, September 26, 2019 6:04 PM
To: Lott, Maureen D. <Maureen.Lott@USPTO.GOV>
Subject: Re: Thank you & Follow-up Question (Serial # 88322332)

 

Thank you, Maureen! I filed the response (requesting amending the basis to Section 1(b)) this morning and can take it from here. Really appreciate the support.

 

 - Heather 

 

On Wed, Sep 25, 2019 at 10:56 AM Lott, Maureen D. <Maureen.Lott@uspto.gov> wrote:

You are correct.  You seem to understand that correctly.

 

To simply provide a new specimen in a request for reconsideration/response (and NOT have to file an allegation of use), you would need to submit a specimen that was in use as of the application filing date.

 

If you don’t have a good specimen that was in use as of the application filing date, then you have the option to change the basis to intent to use (using the request for reconsideration form).  A change to the basis alone would satisfy the refusal/requirement.

 

If you are going to change the basis, then the thing to remember is that you will eventually need to file an allegation of use to amend the application back to a use-based application, to provide new dates of use, and a new specimen that was in use as of the filing the allegation of use (not the application date).   To obtain a registration, a mark has to be in use.

 

So, if you amend the basis, then you have a choice as to when you amend the application back to a use-based application.  You can either file an Amendment to Allege Use before publication (right after you submit the request for reconsideration) OR you can file a Statement of Use after publication (“Amendment to Allege Use” and “Statement of Use” are both names for allegations of use; the names just differ to indicate when in the registration process they are submitted).

 

Assuming you cannot provide a good specimen that was in use as of the application filing date and you amend the basis to 1(b), intent to use, your options are:

 

1)      Right now, submit only a request for reconsideration amending the basis to Section 1(b), intent to use (in which case you will later in the process be asked to submit an allegation of use).

2)      Submit BOTH 1) a request for reconsideration to change the basis to 1(b) AND 2) an amendment to allege use changing the application back to a use based application and providing new dates of use and a new specimen that was used as of the date the allegation of use is filed.

 

If you go with No. 2, please see my prior comments about watching our database to see when the basis is changed to 1(b) before you submit the allegation of use.   

 

I hope that helps.  If not, you may wish to speak with a trademark attorney not associated with the USPTO who could provide more specific legal advice as to your particular situation.              

 

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: Wednesday, September 25, 2019 1:27 PM
To: Lott, Maureen D. <Maureen.Lott@USPTO.GOV>
Subject: Re: Thank you & Follow-up Question (Serial # 88322332)

 

Hi Maureen,


Thank you! When we received the original office action, I understood that we could only submit a new specimen if it was being used in commerce at the time of the original filing.  We are ready with a new specimen that has been used since 9/13/19 but this is after the original filing. Therefore, I ruled out submitting a new specimen as a next step. Maybe I am misunderstanding these instructions? 

 

Thanks for any clarification you can provide,

 

Heather

 

On Tue, Sep 24, 2019 at 3:13 PM Lott, Maureen D. <Maureen.Lott@uspto.gov> wrote:

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

 

 

 


 

--

 

Regards,

Heather Petersen

Watershed Innovations

www.watershedinnovations.net

C: +1 (408) 569-7989

 

 

 


 

--

 

Regards,

Heather Petersen

Watershed Innovations

www.watershedinnovations.net

C: +1 (408) 569-7989

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