Examiners Amendment

United States Patent and Trademark Office (USPTO)

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

 

 

 

EXAMINER’S AMENDMENT

 

 

Issue date:  August 12, 2019

 

 

PREVIOUS ACTIONS:   In a previous Office Action dated May 24, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following: Trademark Act Section 2(e)1 finding the mark merely descriptive.  Additionally, applicant was required to satisfy the following requirements: amend the classification/identification of goods and services, and provide a translation of non-English wording in the mark.  See TMEP §§706, 711.02

 

Based on applicant’s Response filed on July 22, 2019, the trademark examining attorney notes that the following requirements had been satisfied: requirements to amend the classification/identification of goods and services, and provide a translation of non-English wording in the mark.  See TMEP §§713.02, 714.04.  

 

Additionally, based on applicant’s 2f claim of acquired distinctiveness, the following refusal is withdrawn: Trademark Act Section 2(e)1 refusal .  See TMEP §§713.02, 714.04.  

 

Additionally, applicant’s attorney and the trademark examining attorney discussed the application on August 12, 2019.  Based on the communication, the application is amended as set forth below.

 

Application has been amended as shown below.  As agreed to by Nicholas Gingo on August 12, 2019, the examining attorney has amended the application as shown below.  Please notify the examining attorney immediately of any objections.  TMEP §707.  Otherwise, no response is required.  Id.  In addition, applicant is advised that amendments to the goods and/or services are permitted only if they clarify or limit them; amendments that add to or broaden the scope of the goods and/or services are not permitted.  37 C.F.R. §2.71(a).

 

DISCLAIMER

 

The following disclaimer statement is added to the record:

 

            No claim is made to the exclusive right to use “DISTILLATA” in Class 32 apart from the mark as shown.

 

See 15 U.S.C. §1056(a); TMEP §§1213, 1213.08(a)(i).

 

ATTORNEY BAR INFORMATION PROVIDED

 

The attorney bar number has been provided. 37 C.F.R. §2.17(b)(3).

 

ATTORNEY ATTESTATION PROVIDED

 

 

The attorney has agreed to the following attestation: “I attest that I am an attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory).”  37 C.F.R. §2.17(b)(3).

 

 

 

PROCEDURE AFTER EXAMINER’S AMENDMENT

 

 

After the trademark examining attorney issues the examiner’s amendment, applicant will not receive a registration on the Principal Register for the applied-for mark until the mark makes it through the publication process and opposition period.  The publication process starts once the trademark examining attorney issues the examiner’s amendment and the mark is approved for publication in the USPTO’s Trademark Official Gazette, a weekly online publication.  The USPTO will then send a “Notice of Publication” to the applicant specifying the date its mark will publish in this publication.

 

The USPTO publishes applicant’s mark in the Trademark Official Gazette to provide third parties who believe they may be damaged by registration of applicant’s mark an opportunity to oppose registration of that mark within thirty (30) days from the publication date.  An “opposition” is similar to a federal court proceeding, but this proceeding is held before the Trademark Trial and Appeal Board, a USPTO administrative tribunal of administrative judges who issue decisions on these matters.  If a third party opposes registration of applicant’s mark by instituting an opposition proceeding, the USPTO will send applicant notice of this opposition.  When this occurs, an applicant may wish to hire an attorney due to the complexity of these proceedings.

 

If no one opposes registration of the mark, and the mark was published based upon an applicant’s actual use of the mark in commerce or on a foreign registration, the USPTO generally registers the mark and issues a registration certificate within approximately twelve (12) weeks after the publication date.

 

If no one opposes registration of the mark, and the mark was published based upon an applicant’s bona fide intention to use the mark in commerce, the USPTO generally issues a “Notice of Allowance” within approximately eight (8) weeks after the publication date.  Applicant then has six (6) months from the date of the Notice of Allowance to timely file a “Statement of Use” or to file a request for a six-month “Extension of Time to file a Statement of Use” (extension request).  Extension requests are granted in six-month increments and a maximum of five extension requests can be filed after the issuance of the Notice of Allowance.  If a Statement of Use is not filed within the six months after the Notice of Allowance issued, a Statement of Use must be filed within the time period of a previously granted extension request.  The USPTO will only issue a registration certificate after the trademark examining attorney approves a Statement of Use.

 

For an overview of the time frames for when an applicant should file and the USPTO will issue documents related to a trademark application, see Trademark Application and Post-Registration Process Timelines.  Forms for Statements of Use and extension requests, and additional requirements for intent to use applications, are available online at Intent to Use (ITU) Forms.

 

 

 

 

/Oreoluwa Alao/

Oreoluwa Alao

Examining Attorney

Law Office 108

(571)270-7210

oreoluwa.alao@uspto.gov

 

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on August 12, 2019 for

U.S. Trademark Application Serial No. 88339825

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter.  Please follow the steps below.

 

(1)  Read the official letter.  No response is necessary.

 

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

 

/Oreoluwa Alao/

Oreoluwa Alao

Examining Attorney

Law Office 108

(571)270-7210

oreoluwa.alao@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).

 

 

 

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.”