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:  July 09, 2019

 

INTRODUCTION

 

This Office action is supplemental to and supersedes the previous Office action issued on June 4, 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:  response required to unacceptable amendment to the drawing of the mark.  See TMEP §§706, 711.02. 

 

In a previous Office action(s) dated June 4, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following:  (1) Trademark Act Section 2(d) for a likelihood of confusion with registered marks, (2) specimen refusal.  In addition, applicant was required to satisfy the following requirement(s):  (1) color claim clarification and/or deletion, and appropriate mark description therewith, (2) entity clarification.

 

Based on applicant’s response, the trademark examining attorney notes that the following requirement(s) have been satisfied:  clarification that color is not claimed as a feature of the mark.  See TMEP §713.02. 

 

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

 

•  NEW ISSUE:  unacceptable amended drawing of the mark and mark description therewith

•  Continued Refusal: Section 2(d)

•  Continued Refusal: Unacceptable Specimen of Use

•  Continued Requirement: Entity Clarification

 

Applicant must respond to all issues raised in this Office action and the previous June 4, 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).

 

 

NEW ISSUE: AMENDED DRAWING UNACCEPTABLE

 

Applicant has requested to amend the mark in the application.  The USPTO cannot accept the proposed changes because they would materially alter the mark in the drawing filed with the original application or as previously amended.  37 C.F.R. §2.72(a)(2), (b)(2); TMEP §807.14.  Accordingly, the proposed amendment will not be entered; the previous drawing of the mark will remain operative.  See TMEP §807.17. 

 

The original drawing shows the mark as the design of mirror images of the goddess Ma’at, with the stylized wording “AWAKE” below the design.  The proposed amended drawing shows the mark as having no wording and only the Ma’at goddess design. 

 

The USPTO cannot accept an amendment to a mark if it will materially alter the mark in the drawing filed with the original application, or in a previously accepted amended drawing.  37 C.F.R. §2.72(a)(2), (b)(2); TMEP §807.14.  An amendment to the mark is material when the USPTO would need to republish the mark with the change in the USPTO Trademark Official Gazette to fairly present the mark to the public.  In re Thrifty, Inc., 274 F.3d 1349, 1352, 61 USPQ2d 1121, 1123-24 (Fed. Cir. 2001) (citing In re Hacot-Columbier, 105 F.3d 616, 620, 41 USPQ2d 1523, 1526 (Fed. Cir. 1997)); TMEP §807.14. 

 

That is, an amendment is material if the altered mark does not retain “the essence of the original mark” or if the new and old forms do not “create the impression of being essentially the same mark.”  In re Hacot-Columbier, 105 F.3d at 620, 41 USPQ2d at 1526 (quoting Visa Int’l Serv. Ass’n v. Life-Code Sys., Inc., 220 USPQ 740, 743-44 (TTAB 1983)); see, e.g., In re Who? Vision Sys., Inc., 57 USPQ2d 1211, 1218 (TTAB 2000) (amendment from “TACILESENSE” to “TACTILESENSE” a material alteration); In re CTB Inc., 52 USPQ2d 1471, 1475 (TTAB 1999) (amendment of TURBO with a design to just the typed word TURBO without design a material alteration). 

 

When determining materiality, the addition of any element that would require a further search of the USPTO database for conflicting marks is also relevant.  In re Guitar Straps Online LLC, 103 USPQ2d 1745, 1747 (TTAB 2012) (citing In re Pierce Foods Corp., 230 USPQ 307, 308-09 (TTAB 1986)); In re Who? Vision Sys. Inc., 57 USPQ2d at 1218-19; TMEP §807.14.

 

In the present case, applicant’s proposed amendment would materially alter the mark in the drawing filed with the original application or as previously amended because deletion of the word “AWAKE” entirely changes the overall mark, as it would alter the mark to solely a design where no words are uttered.

 

To avoid the application from abandoning, applicant must respond to this issue.  TMEP §807.17.  Applicant may respond by (1) withdrawing the request to amend the drawing, or (2) arguing that the proposed amendment is not a material alteration of the mark.  Option 1 is recommended.

 

For more information about changes to the mark in the drawing after the application filing date, please go to the Drawing webpage.

 

 

CONTINUED SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

 

Because the original drawing remains operative, the refusal is maintained.  The refusal and all supporting arguments and evidence are incorporated herein by reference to the Office Action dated June 4, 2019.

 

 

CONTINUED REQUIREMENT FOR MARK DESCRIPTION

 

Because the original drawing remains operative, the requirement is maintained per the Office Action dated June 4, 2019.  The following description is suggested, if accurate: 

 

The mark consists of the stylized wording “AWAKE”; above are two mirror image designs of the Ma-at Egyptian goddess.

 

TMEP §807.07(e).

 

 

CONTINUED REFUSAL OF UNACCEPTABLE SPECIMENS OF USE

 

Registration is refused because the specimen in International Class(es) 025 is merely a photocopy of the drawing or a picture or rendering of the applied-for mark, and thus fails to show the applied-for mark in use in commerce with the goods and/or services for each international class.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); In re Chica, 84 USPQ2d 1845, 1848 (TTAB 2007); TMEP §§904, 904.07(a), 1301.04(g)(i).  An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of goods and/or services identified in the application or amendment to allege use.  15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a). 

Further, registration is refused because the specimen does not show the mark in the original and operative drawing in use in commerce in International Class(es) 025, 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).

 

Applicant may respond to this refusal by satisfying one of the following:

 

(1)            Submit a different specimen (a verified “substitute” specimen) for each applicable international class that (a) shows the mark in the operative drawing in actual use in commerce for the goods and/or services in the application or amendment to allege use, and (b) was 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).  Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and webpages that show the mark used in the actual sale, rendering, or advertising of the services.  See TMEP §1301.04(a), (h)(iv)(C).  Specimens comprising advertising and promotional materials must show a direct association between the mark and the services.  TMEP §1301.04(f)(ii).

 

 (2)      Submit a request to amend the filing basis to intent to use under Section 1(b), for which no specimen is required.  This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.

 

The USPTO will not accept an amended drawing submitted in response to this refusal because the changes would materially alter the drawing of the mark in the original application or as previously acceptably amended.  See 37 C.F.R. §2.72(a)-(b); TMEP §807.14.  Specifically, a second attempt to delete all wording, specifically “AWAKE” from the mark, is a material alteration of the original drawing of the mark, as explained above in another section of this letter.

 

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.

 

For an overview of both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/specimen.jsp.

 

 

CONTINUED REQUIREMENT – ENTITY CLARIFICATION

 

In response to the original requirement for applicant information and entity clarification, applicant merely changed the entity of Williams Xavier J'Sean to “JOINT VENTURE”.  The nature of the applicants is still unclear.  Therefore, the requirement is maintained.   See 37 C.F.R. §§2.32(a)(2), (a)(3)(i)-(iii), 2.61(b); TMEP §803.03.

 

If applicant is a partnership, applicant must (1) confirm that the individual name is the partnership’s name or provide the correct name of the partnership, and (2) specify the state or foreign country under whose laws the partnership is organized.  See TMEP §803.03(b).  For U.S. partnerships, applicant must also list, if not yet specified, the names, legal entities, and national citizenship (for individuals), or the U.S. state or foreign country of organization or incorporation (for businesses) of all general partners.  Id.  For foreign partnerships, the names and citizenships of the general partners are not required.  See id.

 

The following format should be used to identify a partnership: 

 

U.S. partnership:  “Awake Clothing, a partnership organized under the laws of Maryland, composed of Williams Xavier J'Sean, a citizen of the United States, and Shermell K. Ward, a citizen of the United States.”

 

Id. 

 

Alternatively, if applicant is applying as joint owners/applicants, applicant must specify the names of each joint applicant and his or her country of citizenship.  See TMEP §803.03(d).

 

If, in response to the above request, applicant provides information indicating that it is not the owner of the mark, registration will be refused because the application was void as filed.  See 37 C.F.R. §2.71(d); TMEP §§803.06, 1201.02(b).  An application must be filed by the party who owns or is entitled to use the mark as of the application filing date.  See 37 C.F.R. §2.71(d); TMEP §1201.02(b).

 

HOW TO RESPOND TO OFFICE ACTION 

 

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.

 

Because of the legal technicalities and strict deadlines involved in the USPTO application process, applicant may wish to hire a private 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; an online directory of legal professionals, such as FindLaw®; or a local telephone directory.  The USPTO, however, may not assist an applicant in the selection of a private attorney.  37 C.F.R. §2.11.

 

 

 

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  

 

 

/Ada P. Han/

Trademark Examining Attorney

Law Office 106

US Patent & Trademark Office

(571) 272-5873

ada.han@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 July 09, 2019 for

U.S. Trademark Application Serial No. 88345371

 

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. 

 

 

/Ada P. Han/

Trademark Examining Attorney

Law Office 106

US Patent & Trademark Office

(571) 272-5873

ada.han@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 July 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.”