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: July 11, 2019

 

This Office action follows applicant’s communication filed on May 24, 2019.  

 

Based on information in applicant’s response, the trademark examining attorney now issues the following new requirements: an amended mark description requirement, clarification of the color claim because there is a color claim in the U.S. application but not in the foreign registration, as well as an advisory regarding an unnecessary disclaimer.  See TMEP §§706, 711.02.

 

In a previous Office action, dated May 23, 2019, the trademark examining attorney specified that the applicant was required to satisfy a requirement regarding a translation of the foreign registration. The examining attorney notes that the foreign registration requirement has been satisfied. See TMEP §§713.02, 714.04.

 

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

 

•        NEW ISSUE:  Clarification of Color Claim – Color Claim in U.S. Application But Not Foreign Registration

•        NEW ISSUE:  Amended Mark Description Required

•        NEW ISSUE:  Advisory – Unnecessary Disclaimer

 

All Relevant Arguments and Evidence Included with the Previous Office Action are Continued and Maintained and Incorporated Herein by Reference.

 

CLARIFICATION OF COLOR CLAIM – COLOR CLAIM IN U.S. APPLICATION BUT NOT FOREIGN REGISTRATION

 

Applicant must clarify whether color is a feature of the mark in the foreign registration.  See 37 C.F.R. §§2.37, 2.52(b)(1), 2.61(b); TMEP §807.07(a)-(a)(ii), (d)(ii).  The foreign registration and the drawing in the U.S. application show the same mark in the same colors; however, only the U.S. application explicitly states that color is a feature of the mark.  Because the drawing of a mark in a U.S. application must be a substantially exact representation of the mark that appears in the foreign registration; any color claims in the U.S. application and foreign registration must match.  37 C.F.R. §2.51(c); In re Hacot-Colombier, 105 F.3d 616, 618-19, 41 USPQ2d 1523, 1525 (Fed. Cir. 1997); TMEP §§807.07(b), 1011.01; see United Rum Merchs. Ltd. v. Distillers Corp. (S.A.), 9 USPQ2d 1481 (TTAB 1988). 

 

To clarify whether color is claimed as a feature of the mark in the foreign registration, applicant may satisfy one of the following:

 

(1)        If the mark in the foreign registration is intended to be in color and includes a color claim or the legal equivalent, applicant must provide a statement that the foreign registration includes a color claim or the legal equivalent.  See TMEP §§807.07(d)(ii), 1011.01.

 

The following format for the statement is suggested:  The foreign registration includes a color claim or the legal equivalent for the colors black, and white.  

 

If applicant intends to claim color based on the foreign registration, applicant is advised that it cannot claim any phantom elements or colors; here the applicant has claimed the color gray although it is not a feature of the drawing. A mark with a changeable or “phantom” element such as varying or changing colors is generally considered to be more than one mark.  See In re Hayes, 62 USPQ2d at 1445.  In addition to the requirement to select one mark, the colors in the drawing of the mark, color claim, and description must match. When an applicant submits a drawing showing the mark in color, applicant’s color claim and description must reference all the colors in the mark, including black, white and/or gray.  TMEP §807.07(d); see 37 C.F.R. §§2.37, 2.52(b)(1).  If black, white and/or gray are not a color feature of the mark, applicant must provide a statement in the description that black, white and/or gray represent background, outlining, shading and/or transparent areas and are not part of the mark.  TMEP §807.07(d).

 

 

Therefore, applicant should amend the color claim and mark description as follows, if accurate:

 

 

Color claim: The colors black, and white are claimed as a feature of the mark.

 

Mark description: The mark consists of the stylized wording “AMA” in black which also appears as a stylized spider. Below the “M” are two pairs of black and white eyes. Where otherwise not claimed the color white represents background and/or transparent areas.

 

(2)        If the mark in the foreign registration is not intended to be in color, applicant must provide a description of the literal and design elements in the mark omitting any reference to color, for the U.S. application.  TMEP §§807.07(b), 1011.01; see TMEP §§808 et seq.  Additionally, although applicant may amend the drawing to delete color from the mark, any other amendments to the drawing will not be accepted if they would materially alter the mark.  37 C.F.R. §2.72(c)(2); TMEP §§807.14, 1011.01.

 

            The following mark description is suggested, if accurate:

 

            The mark consists of the stylized wording “AMA” which also appears as a stylized spider.  There are stylized eyes below the letter “M”.   

 

AMENDED MARK DESCRIPTION AND COLOR CLAIM REQUIRED

 

Applicant must submit an amended description of the mark that agrees with the mark on the drawing.  37 C.F.R. §2.37; see TMEP §§808.01, 808.02.  The current description is inconsistent with the mark on the drawing and thus is inaccurate.  37 C.F.R. §2.37; see TMEP §§808.01, 808.02.  Descriptions must be accurate and identify only those literal and design elements appearing in the mark.  See 37 C.F.R. §2.37; TMEP §§808.02, 808.03(d).  Here, applicant describes the wording of the applied-for-mark as “AYMA”.  However, the wording appears as “AMA” in the applied-for mark.

 

Applicant is advised that the mark description requirements will vary depending on whether the foreign registration includes a color claim (See above).

 

The following descriptions are suggested, if accurate: 

 

(1)  If the foreign registration does not include a color claim:

 

The mark consists of the stylized wording “AMA” which also appears as a stylized spider.  There are stylized eyes below the letter “M”.   

 

(2)  If the mark in the foreign registration is intended to be in color:

 

The mark consists of the stylized wording “AMA” in black which also appears as a stylized spider. Below the “M” are two pairs of black and white eyes. Where otherwise not claimed the color white represents background and/or transparent areas.

 

 

ADVISORY – UNNECCESSARY DISCLAIMER

 

The application includes a disclaimer of the following matter in the applied-for mark:  “ANY”. An applicant may voluntarily disclaim matter in a mark regardless of whether the matter is registrable.  TMEP §1213.01(c); see 15 U.S.C. §1056(a).  However, a disclaimer of this matter is not required.

 

Therefore, applicant may request to withdraw this disclaimer from the application.  If applicant does not expressly request its withdrawal, the disclaimer will remain in the application and will be printed on the registration certificate.

 

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. 

Because of the legal technicalities and strict deadlines involved in the USPTO application process, applicant may wish to hire a qualified U.S. attorney specializing in trademark matters to represent applicant in this process and provide legal advice.  Although the undersigned trademark examining attorney is permitted to help an applicant understand the contents of an Office action as well as the application process in general, no USPTO attorney or staff is permitted to give an applicant legal advice or statements about an applicant’s legal rights.  TMEP §§705.02, 709.06. 

For attorney referral information, applicant may consult the American Bar Association’s Consumers’ Guide to Legal Help or an online directory of legal professionals, such as FindLaw®.  The USPTO, however, may not assist an applicant in the selection of a private attorney.  37 C.F.R. §2.11.

Please note that foreign attorneys, other than duly authorized Canadian attorneys, are not permitted to represent applicants before the USPTO.  See 37 C.F.R. §§2.17(e), 11.14(c), (e); TMEP §602.03-.03(c).  The only attorneys who may practice before the USPTO in trademark matters are (1) attorneys in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and other U.S. commonwealths/territories; and (2) duly authorized Canadian agents/attorneys.  See 37 C.F.R. §§2.17(e), 11.14(a), (c); TMEP §602.

 

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.  

 

 

 

/James McNamara/

Trademark Examining Attorney

Law Office 127

James.McNamara@uspto.gov

571-272-0923

 

 

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)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on July 11, 2019 for

U.S. Trademark Application Serial No. 88337288

 

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. 

 

 

/James McNamara/

Trademark Examining Attorney

Law Office 127

James.McNamara@uspto.gov

571-272-0923

 

 

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 July 11, 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.”