Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

NONFINAL OFFICE ACTION

 

The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned.  Respond using the Trademark Electronic Application System (TEAS).  A link to the appropriate TEAS response form appears at the end of this Office action. 

 

 

Issue date:  December 09, 2019

 

INTRODUCTION

 

This Office action is supplemental to and supersedes the previous Office action issued on May 15, 2019 in connection with this application. Based on information and/or documentation in applicant’s response, the trademark examining attorney now issues the following new requirement:  Unacceptable Section 2(f) Claim Based on Five or More Years’ Use – Unverified Statement.  See TMEP §§706, 711.02. 

 

In a previous Office action dated May 15, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following: 

 

• Section 2(d) Refusal – Likelihood of Confusion
• Section 2(e)(4) Refusal – Primarily Merely a Surname

 

In addition, applicant was required to satisfy the following requirements: 

 

• Identification and Classification of Goods Requirement
• Multiple-Class Application Requirements
• Certificate of Foreign Registration Required

 

Based on applicant’s response, the trademark examining attorney notes that the following requirements have been satisfied: 

 

• Identification and Classification of Goods Requirement
• Multiple-Class Application Requirements

 

See TMEP §713.02. 

 

Additionally, based on applicant’s response, the following refusals have been withdrawn:  Section 2(d) Refusal – Likelihood of Confusion with regards to U.S. Registration Nos. 3019208 and 3019209.  See TMEP §§713.02, 714.04. 

 

The following is a SUMMARY OF ISSUES that applicant must address:

 

• NEW ISSUE: Unacceptable Section 2(f) Claim Based on Five or More Years’ Use – Unverified Statement
• Section 2(d) Refusal – Likelihood of Confusion with regards to U.S. Registration Nos. 4638887 and 5025982 – maintained and continued
• Section 2(e)(4) Refusal – Primarily Merely a Surname – maintained and continued
• Certificate of Foreign Registration Required – maintained and continued

 

Applicant must respond to all issues raised in this Office action and the previous May 15, 2019 Office action, within six (6) months of the date of issuance of this Office action.  37 C.F.R. §2.62(a); see TMEP §711.02.  If applicant does not respond within this time limit, the application will be abandoned.  37 C.F.R. §2.65(a).

 

 

UNACCEPTABLE Section 2(f) claim BASED ON Five OR MORE Years’ Use – UNVERIFIED STATEMENT

 

Applicant provided a Section 2(f) claim based on five or more years’ use. However, applicant did not verify the statement with an affidavit or signed declaration as required under 37 C.F.R. §2.20.  37 C.F.R. §2.41(a)(2); TMEP §1212.05(d); see 37 C.F.R. §2.193(e)(1).  Therefore, the current Section 2(f) claim is unacceptable.

 

To amend the application to assert Section 2(f) based on five years’ use, applicant should provide (1) information regarding the length of use of the mark in commerce and/or dates of use, and (2) the following written statement claiming acquired distinctiveness, if accurate:

 

The mark has become distinctive of the goods and/or services through the applicant’s substantially exclusive and continuous use of the mark in commerce that the U.S. Congress may lawfully regulate for at least the five years immediately before the date of this statement.

 

See 15 U.S.C. §1052(f); 37 C.F.R. §2.41(a)(2); TMEP §§1212.05(d), 1212.08.  This statement must be verified with an affidavit or signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.41(a)(2); TMEP §1212.05(d); see 37 C.F.R. §2.193(e)(1).

 

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

 

In total, examining attorney considered applicant’s arguments with regards to the likelihood of confusion between the applied-for mark and registered mark in U.S. Registration Nos. 4638887 and 5025982, and found them unpersuasive. Specific arguments will be addressed in full in a later Office action.

 

As such, the previously issued 2(d) likelihood of confusion refusal with regards to U.S. Registration Nos. 4638887 and 5025982 is maintained and continued.

 

 

SECTION 2(e)(4) REFUSAL – PRIMARILY MERELY A SURNAME

 

As stated above, applicant did not provide an acceptable Section 2(f) Claim based on five years’ use. Further, applicant did not address the Section 2(e)(4) Refusal in their response dated November 15, 2019.  Specific arguments will be addressed in full in a later Office action. Accordingly, the primarily merely a surname refusal pursuant Trademark Act Section 2(e)(4) is maintained and continued.

 

SUPPLEMENTAL REGISTER ADVISORY - Applicant may respond to the Section 2(e)(4) refusal by submitting evidence and arguments in support of registration and/or by amending the application to seek registration on the Supplemental Register.  See 15 U.S.C. §1091; 37 C.F.R. §§2.47, 2.75(a); TMEP §§801.02(b), 816.  Amending to the Supplemental Register does not preclude applicant from submitting evidence and arguments against the refusals.  TMEP §816.04.

 

 

CERTIFICATE OF FOREIGN REGISTRATION REQUIRED

 

Applicant has not provided a copy of a foreign registration.  An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin.  15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016.  In addition, the applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law.  15 U.S.C. §1126(b); TMEP §§1002.01, 1004.

 

A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in the applicant’s country of origin.  TMEP §1004.01.  If an applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, the applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to the applicant’s country of origin.  TMEP §1016.

 

Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin.  If the foreign registration is not written in English, applicant must also provide an English translation.  37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b).  The translation should be signed by the translator.  TMEP §1004.01(b).

 

Accordingly, the requirement is maintained and continued.

 

 

RESPONSE GUIDELINES

 

Applicant may 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 refusals and requirements 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.  

 

How to respond.  Click to file a response to this nonfinal Office action.    

 

 

/Michael J. Clark/

Trademark Examining Attorney

Law Office 121

(571) 272-4967

michael.clark1@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on December 09, 2019 for

U.S. Trademark Application Serial No. 88323544

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Michael J. Clark/

Trademark Examining Attorney

Law Office 121

(571) 272-4967

michael.clark1@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from December 09, 2019, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”