To: | THE ADVANCE EQUIPMENT MANUFACTURING COMP ETC. (jlampel@lampellaw.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88356538 - ADVANCE - ADV-T-19-01 |
Sent: | 6/28/2019 7:35:35 AM |
Sent As: | ECOM108@USPTO.GOV |
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UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88356538
MARK: ADVANCE
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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: THE ADVANCE EQUIPMENT MANUFACTURING COMP ETC.
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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.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Applicant has applied to register ADVANCE in standard characters for “Taping Knives; Offset Knives; Wipe-down Knives; Drywall Knives; Curved Blade; Knives; Knockdown Knives; Universal Sander; Mud Pans; Hand Sanders; Pole Sanders; Roll Lifters; Mini Lifters; Corner Trowels; Drywall Mud Mixers; Pail Scoop; Scarifies; Circle Cutter; Tape Holder; Drywall Hammer; Mortar Scraper; Mud Jam; Drywall Banjo; Floor Scrapers; Spray Shields; All-purpose Scrapers; Rollers Cleaner; Swivel Pot Hook; Brush and Tool Holders; Quicktruss Door Stands; Graining Tools; Paste Machines; Paste Tables; Paste Boards; Trestles; Border Pasters; Seam Rollers; Shears; Smoothing Blades” in International Class 8.
Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties. See 15 U.S.C. §1052(d). Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”). In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017). Only those factors that are “relevant and of record” need be considered. M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018).
Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services. See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.
Similarity of the Marks
The applicant has applied for the mark ADVANCE. The cited mark are ADVANCE and HYBRID ADVANCE owned by Societe BIC société anonyme, and ADVANCE BRUSH owned by August Rüggeberg GmbH & Co.
Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)); TMEP §1207.01(b).
When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.” Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b). The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks. In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (CCPA 1971)); TMEP §1207.01(b).
In re Registration No. 3168848
Therefore, the marks are confusingly similar.
In re Registration Nos. 3908723 and 5522714
Here, applicant’s mark, ADVANCE, is partially identical to registrants’ marks, HYBRID ADVANCE and ADVANCE BRUSH. Although applicant’s mark does not contain the entirety of the registered marks, applicant’s mark is likely to appear to prospective purchasers as a shortened form of registrants’ marks. See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985)). Thus, merely omitting some of the wording from a registered mark may not overcome a likelihood of confusion. See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257; In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii). In this case, applicant’s mark does not create a distinct commercial impression from the registered marks because it contains some of the wording in the registered marks and does not add any wording that would distinguish it from those marks.
Further, the term “BRUSH” in ADVANCE BRUSH is disclaimed. Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii). Disclaimed matter that is descriptive of or generic for a party’s goods is typically less significant or less dominant when comparing marks. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).
Finally, the design in ADVANCE BRUSH does not sufficiently differentiate the mark from applicant’s mark. When evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii). Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed. In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).
Because the marks share the term “ADVANCE”, and therefore look and sound similar, the marks are considered similar for likelihood of confusion purposes.
Relatedness of the Goods
The applicant’s goods at issue are “Taping Knives; Offset Knives; Wipe-down Knives; Drywall Knives; Curved Blade; Knives; Knockdown Knives; Universal Sander; Mud Pans; Hand Sanders; Pole Sanders; Roll Lifters; Mini Lifters; Corner Trowels; Drywall Mud Mixers; Pail Scoop; Scarifies; Circle Cutter; Tape Holder; Drywall Hammer; Mortar Scraper; Mud Jam; Drywall Banjo; Floor Scrapers; Spray Shields; All-purpose Scrapers; Rollers Cleaner; Swivel Pot Hook; Brush and Tool Holders; Quicktruss Door Stands; Graining Tools; Paste Machines; Paste Tables; Paste Boards; Trestles; Border Pasters; Seam Rollers; Shears; Smoothing Blades”.
The registrant’s relevant goods are:
· ADVANCE: “Razors and razor blades” in Class 8;
· HYBRID ADVANCE: “shavers, namely, razors and razor blades” in Class 8;
· ADVANCE BRUSH: “brush holders for use in rotating electrical machinery” in Class 7, and “Brushes, namely scraping brushes, utility brushes” in Class 21.
In re Registration Nos. 3168848 and 3908723
Applicant’s goods at issue are “Curved Blade; Knives; Shears” in Class 8.
The registrant’s relevant goods are:
· ADVANCE: “Razors and razor blades” in Class 8;
· HYBRID ADVANCE: “shavers, namely, razors and razor blades” in Class 8.
In this case, the application use broad wording to describe “curved blade; knives; shears” which presumably encompasses all goods of the type described, including registrant’s more narrow razors, razor blades, and shavers. See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). Thus, applicant’s and registrant’s goods are highly related. See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).
Additionally, the goods of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.” In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). Thus, applicant’s and registrant’s goods are related.
In re Registration No. 5522714
The applicant’s goods at issue are “Taping Knives; Offset Knives; Wipe-down Knives; Drywall Knives; Curved Blade; Knives; Knockdown Knives; Universal Sander; Mud Pans; Hand Sanders; Pole Sanders; Roll Lifters; Mini Lifters; Corner Trowels; Drywall Mud Mixers; Pail Scoop; Scarifies; Circle Cutter; Tape Holder; Drywall Hammer; Mortar Scraper; Mud Jam; Drywall Banjo; Floor Scrapers; Spray Shields; All-purpose Scrapers; Rollers Cleaner; Swivel Pot Hook; Brush and Tool Holders; Quicktruss Door Stands; Graining Tools; Paste Machines; Paste Tables; Paste Boards; Trestles; Border Pasters; Seam Rollers; Shears; Smoothing Blades”.
The registrant’s relevant goods are: “brush holders for use in rotating electrical machinery” in Class 7, and “Brushes, namely scraping brushes, utility brushes” in Class 21.
In this case, the application uses broad wording to describe brush holders, which presumably encompasses all goods of the type described, including registrant’s more narrow “brush holders for use in rotating electrical machinery”. See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). Thus, applicant’s and registrant’s are highly related. See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).
• Applicant provides brushes as well as the applied-for goods:
o http://advance-equipment.com/product/smoothing-brush/
• Marshalltown provides brushes as well as the applied-for goods:
o http://marshalltown.com/search?q=brush
o http://marshalltown.com/drywallplastering
• All-Wall sells brushes as well as the applied-for goods:
o http://www.all-wall.com/SSearch.html?query=brush&go=
o http://www.all-wall.com/New-Drywall-Tools/
Thus, applicant’s and registrant’s goods are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
Accordingly, because the marks are significantly similar and the goods are highly related, purchasers are likely to be confused as to the source of the goods. Thus, registration is refused pursuant to Section 2(d) of the Trademark Act.
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration. Applicant must address the following requirements.
CLASSIFICATION AND IDENTIFICATION OF GOODS
The identification of goods in the application is indefinite and/or overbroad and must be clarified and properly classified to ensure proper analysis.
The wording “Universal Sander”, “Pole Sanders”, “Roll Lifters”, “Mini Lifters”, “Drywall Mud Mixers”, “Circle Cutter”, “Drywall Hammer”, “Mortar Scraper”, “Mud Jam”, “Drywall Banjo”, “Floor Scrapers”, and “All-purpose Scrapers” in the identification of goods is indefinite and overbroad and must be clarified to specify whether the tools are electric or operated by hand. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. For example, electric sanders are in Class 7, while hand-operated sanders are in Class 8.
The wording “Knives” in the identification of goods is indefinite and must be clarified because it does not specify the types of knives. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. For example, electric knives are in Class 7, while putty knives are in Class 8.
The wording “Mud Pans” in the identification of goods is indefinite and must be clarified to specify the purpose of the mud pans (e.g., drywall mud pans). See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “Pail Scoop” in the identification of goods is indefinite and overbroad must be clarified to specify the purpose of the pail scoop. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. For example, drywall pail scoops are in Class 8, while scoops for household purposes are in Class 21.
The wording “Tape Holder” in the identification of goods is indefinite and must be clarified to specify the type of tape being held (e.g., adhesive tape holders). See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “Spray Shields” in the identification of goods is indefinite and overbroad must be clarified to specify the purpose of the spray shields. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. For example, drywall spray shields are in Class 8, while face-protection spray shields are in Class 9.
The wording “Rollers Cleaner” in the identification of goods is indefinite and overbroad and must be clarified. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. For example, cleaner for paint rollers is in Class 3, while hand-operated roller cleaner tools are in Class 8, and electric roller cleaner tools are in Class 7.
The wording “Swivel Pot Hooks” in the identification of goods is indefinite and must be clarified to specify the material composition (e.g., swivel pot hooks of metal). See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “Brush Holders” in the identification of goods is indefinite and overbroad and must be clarified. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. For example, paint brush holders are in Class 16, while toothbrush holders are in Class 21.
Identifications of goods should generally be comprised of generic everyday wording for the goods, and exclude proprietary or potentially-proprietary wording. See TMEP §§1402.01, 1402.09. A registered mark indicates origin in one particular party and so may not be used to identify goods that originate in a party other than that registrant. TMEP §1402.09 (citing Camloc Fastener Corp. v. Grant, 119 USPQ at 264 n.1).
Additionally, the wording “Door Stands” in the identification of goods is indefinite and must be clarified to specify the purpose and material composition of the door stands (e.g., door painting stands of metal). See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “Graining Tools” in the identification of goods is indefinite and overbroad must be clarified to specify the purpose of the tools and whether the tools are electric or hand-operated. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. For example, electric wood graining tools are in Class 7, while hand-operated wood graining tools are in Class 8.
The wording “Paste Machines” in the identification of goods is indefinite and must be clarified to specify the purpose of the paste machines (e.g., wallpaper pasting machines). See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “Paste Tables” in the identification of goods is indefinite and must be clarified to specify the purpose of the paste tables (e.g., wallpaper paste tables). See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “Trestles” in the identification of goods is indefinite and overbroad and must be clarified to specify the purpose and material composition of the trestles. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. For example, metal trestles for use as table supports are in Class 6, trestles for use in construction are in Class 19, and non-metal trestles for supporting tables are in Class 20.
The wording “Border Pasters” in the identification of goods is indefinite and must be clarified to specify the purpose and nature of the border pasters (e.g., wallpaper border pasting machines). See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “Seam Rollers” in the identification of goods is indefinite and must be clarified o specify the purpose of the seam rollers (e.g., wallpaper seam rollers). See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “Smoothing Blades” in the identification of goods is indefinite and overbroad and must be clarified to specify the nature and purpose of the smoothing blades. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. For example, electric smoothing blade tools for vinyl are in Class 7, while hand-operated smoothing blade tools for vinyl are in Class 8.
Applicant may adopt the following suggestions, if accurate:
003: Cleaner for paint rollers
006: Swivel pot hooks of metal; door painting stands of metal; metal trestles for use as table supports
007: Electric knives; power saw blades; universal electric sanders; electric pole sanders; power-operated roll lifters; power-operated mini lifters; electric drywall mud mixers; scarifier machines; electric circle cutters; electric drywall hammers; electric mortar scrapers; electric mud jam tools; electric drywall banjos; electric floor scrapers; electric all-purpose scrapers; electric roller cleaner tools; electric wood graining tools; wallpaper pasting machines; wallpaper border pasting machines; electric smoothing blade tools for vinyl
008: Taping knives; offset knives; wipe-down knives; drywall knives; curved blade knives; knives, namely, {specify type of knives}; knockdown knives; universal hand-operated sanders; drywall mud pans; hand sanders; hand-operated pole sanders; hand-operated roll lifters; hand-operated mini lifters; corner trowels; hand-operated drywall mud mixers; drywall pail scoops; hand-operated circle cutters; hand-operated drywall hammers; hand-operated mortar scrapers; hand-operated mud jam tools; hand-operated drywall banjos; hand-operated floor scrapers; drywall spray shields; hand-operated all-purpose scrapers; hand-operated roller cleaner tools; tool holders; hand-operated wood graining tools; shears; hand-operated smoothing blade tools for vinyl
016: Adhesive tape holders; paint brush holders; paste boards
019: Trestles for use in construction
020: Wallpaper paste tables; non-metal trestles for supporting tables
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
Applicant must also address the following additional requirement.
MULTIPLE-CLASS APPLICATION REQUIREMENTS
Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class and satisfy all the requirements below for each international class:
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).
(2) Submit verified dates of first use of the mark anywhere and in commerce for each international class. See more information about verified dates of use.
(3) Submit a specimen for each international class. The current specimen is acceptable for Class 8, but is not acceptable for Classes 3, 6, 7, 16, 19, and 20. See more information about specimens.
Examples of specimens for goods include tags, labels, instruction manuals, containers, and photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale. 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.
(4) Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.” See more information about verification.
See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class. See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a). See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.
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.
/Nathaniel Pettican/
Nathaniel Pettican
Examining Attorney
Law Office 108
(571) 272-1087
nathaniel.pettican@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.