To: | Milwaukee Electric Tool Corporation (mkeipdocket@michaelbest.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88341416 - 066042-6537 |
Sent: | 5/9/2019 10:04:54 AM |
Sent As: | ECOM105@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88341416
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Milwaukee Electric Tool Corporation
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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: 5/9/2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SEARCH OF OFFICE’S DATABASE OF MARKS
The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
REFUSAL FOR UNACCEPTABLE SPECIMEN
Registration is refused because the specimen does not show the mark in the drawing in use in commerce in International Class 9, which is required in the application or amendment to allege use. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a), 1301.04(g)(i). The mark appearing on the specimen and in the drawing must match; that is, the mark in the drawing “must be a substantially exact representation of the mark” on the specimen. See 37 C.F.R. §2.51(a)-(b); TMEP §807.12(a).
In this case, the drawing displays the mark with four parallelograms completely shaded in gray and a circle shaded in white with red outlining. However, the specimen displays the mark with two-toned parallelograms in dark gray and light gray and a circle with black and white shading inside the red outlined circle. Also, the specimen shows the mark on a black background. The mark on the specimen does not match the mark in the drawing because the colors are different. Applicant has thus failed to provide the required evidence of use of the mark in commerce. See TMEP §807.12(a).
Applicant may respond to this refusal by satisfying one of the following:
(1) Submit a new color drawing of the mark that shows the mark on the specimen and an amendment of the description and color claim that agrees with the new drawing. See 37 C.F.R. §2.72(b). Applicant may amend the mark in the drawing to match the mark on the specimen but may not make any other changes or amendments that would materially alter the drawing of the mark. See 37 C.F.R. §2.72(a)-(b); TMEP §807.14. The following color claim and description are suggested, if accurate:
Color claim: The colors red, dark gray, light gray, black, and white are claimed as a feature of the mark.
Description: The mark consists of a red horizontal line from which five red vertical lines extend upward. Above each of the first four vertical lines, which graduate in height, is a dark gray parallelogram with light gray shading on the right side of each shape. At the top of the fifth vertical line is a red circle, shaded in black with white dots. Centered within the circle is a white battery outlined in black with a black lightning bolt appearing thereon. All of the foregoing appears on a black background.
(2) Submit a different specimen (a verified “substitute” specimen) for each applicable international class that (a) shows the mark in the drawing in actual use in commerce in the colors depicted on the drawing and for the goods and/or services in the application or amendment to allege use, and (b) in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use.
Examples of specimens for goods include tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, and displays associated with the actual goods at their point of sale. See TMEP §§904.03 et seq. Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods. TMEP §904.03(i).
For more information about drawings and instructions on how to satisfy these response options online using the Trademark Electronic Application System (TEAS) form, see the Drawing webpage.
Requirement for Acceptable Color Claim and Description of the Mark
The drawing shows the applied-for mark in various colors, including black, white and/or gray; however, the color claim and description of the mark do not reference all instances of the white. The color claim and description must be complete and reference all the colors in the mark. See 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §§807.07(a) et seq. Therefore, applicant must clarify whether the white is used as color in the mark or to indicate background, outlining, shading, and/or transparent areas. TMEP §807.07(d); see 37 C.F.R. §2.61(b).
To clarify how black, white and/or gray are being used in the mark, applicant may satisfy one of the following:
(1) If white is a feature of the mark, applicant must amend the color claim to include the color and amend the description to identify where white appears in the literal and/or design elements of the mark. The following color claim and description are suggested, if accurate:
Color claim: The colors red, dark gray, black, and white are claimed as a feature of the mark.
Description: The mark consists of a red horizontal line from which five red vertical lines extend upward. Above each of the first four vertical lines, which graduate in height, is a dark gray parallelogram with light gray shading on the right side of each shape. At the top of the fifth vertical line is a red circle, shaded in white. Centered within the circle is a white battery outlined in black with a black lightning bolt appearing thereon. All of the foregoing appears on a white background.
NOTE: The examining attorney notes, if applicant chooses this option to satisfy the requirement, applicant must still provide a new specimen as indicated in the refusal above as the mark and the specimen would remain non-matching.
(2) If black, white and/or gray are not a feature of the mark, applicant must amend the description to state that black, white, and/or gray represent background, outlining, shading and/or transparent areas and are not part of the mark. The following description is suggested, if accurate:
The mark consists of a red horizontal line from which five red vertical lines extend upward. Above each of the first four vertical lines, which graduate in height, is a dark gray parallelogram. At the top of the fifth vertical line is a red circle, and centered within the circle is a white battery outlined in black with a black lightning bolt appearing thereon. All other instances of the color white in the mark represents background, outlining, shading and/or transparent areas and is not claimed as a feature of the mark.
NOTE: The examining attorney notes, if applicant chooses this option to satisfy the requirement, applicant must still provide a new specimen as indicated in the refusal above as the mark and the specimen would remain non-matching but only because the parallelograms are not consistent. The shading in the circle and the background colors would not be an issue.
TMEP §807.07(d).
RESPONSE GUIDELINES
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.
/Jeanie H. Lee/
Examining Attorney
Law Office 105
(571) 272-6110
jeanie.lee@uspto.gov
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.