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: 6/6/2019

 

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.

 

I.         SEARCH OF THE OFFICE RECORDS

 

Application Refused--Section 2(d) Refusal—Likelihood of Confusion

The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d) because the applicant’s applied-for mark when used on or in connection with the identified goods and/or services so resembles the mark in U.S. Registration No. 2178561 as to be likely to cause confusion, to cause mistake, or deceive. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  Please see the enclosed registration.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a consumer would be confused, mistaken, or deceived as to the source of the goods and/or services of the applicant and registrant(s).  See 15 U.S.C. §1052(d).  Determining likelihood of confusion is made 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).  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017).  However, “[n]ot all of the [du Pont] factors are relevant to every case, and only factors of significance to the particular mark need be considered.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1366, 101 USPQ2d 1713, 1719 (Fed. Cir. 2012) (quoting In re Mighty Leaf Tea, 601. F.3d 1342, 1346, 94 USPQ2d 1257, 1259 (Fed. Cir 2010)).  Furthermore, the relevant du Pont factors are not necessarily “of equal weight in a given case, and any one of the factors may control a particular case.” Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F3d 1344, 1355, 98 USPQ2d 1253, 1260 (Fed. Cir. 2011) (quoting In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003).

 

The USPTO may focus its analysis “on dispositive factors, such as similarity of the marks and relatedness of the goods [and/or services].”  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)); see TMEP §1207.01.  In this case, the examining attorney finds the following du Pont factors are most relevant: the similarity of the marks, the similarity and nature of the goods and/or services, and the similarity of the trade channels for these goods and/or services.  See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.

 

The applicant’s proposed mark is STORABLE; the registered mark is STORABLES.

 

Comparison of the Respective Marks

In a likelihood of confusion determination, the examining attorney must compare the marks for similarities in sound, appearance, meaning or connotation.  In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (CCPA 1973); TMEP §1207.01(b).  Similarity in any one of these elements is sufficient to find a likelihood of confusion. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB (1988); In re Mack, 197 USPQ 755 (TTAB 1977); see TMEP §§1207.01(b).

 

The test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side-by-side comparison.  The issue is whether the marks create the same overall impression. See Racot, Inc. v. M.C. Becton, 214 F.2d 1322, 1329-30, 54 USPQ2d 1894, 1899 (Fed Cir. 2000); Visual Information Institute, Inc. v. Vicon Industries Inc., 209 USPQ 179 (TTAB 1980).  The focus is on the recollection of the average purchaser who normally retains a general rather than specific impression of trademarks.  Chemetron Corp. v. Morris Coupling & Clamp Co., 203 USPQ 537 (TTAB 1979); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975); TMEP §1207.01(b).

 

The examining attorney refuses registration of the proposed mark STORABLE on the grounds that it will cause a likelihood of confusion with the registered mark STROABLES.  In this case, the applicant’s proposed mark so resembles the registered mark so as to render confusion as to source likely.  The respective marks are essentially identical—the proposed mark is merely the singular form of the cited registration.  An applied-for mark that is the singular or plural form of a registered mark is essentially identical in sound, appearance, meaning, and commercial impression, and thus the marks are confusingly similar.  Swiss Grill Ltd., v. Wolf Steel Ltd., 115 USPQ2d 2001, 2011 n.17 (TTAB 2015) (holding “it is obvious that the virtually identical marks [the singular and plural of SWISS GRILL] are confusingly similar”); Weider Publ’ns, LLC v. D & D Beauty Care Co., 109 USPQ2d 1347, 1355 (TTAB 2014) (finding the singular and plural forms of SHAPE to be essentially the same mark) (citing Wilson v. Delaunay, 245 F.2d 877, 878, 114 USPQ 339, 341 (C.C.P.A. 1957) (finding no material difference between the singular and plural forms of ZOMBIE such that the marks were considered the same mark).  It is noted that the courts consistently and repeatedly found that similarity in sound alone is sufficient to support a finding of likelihood of confusion, but also, that slight differences in the sound of similar marks will not avoid a finding of likelihood of confusion. See e.g., RE/MAX of Am., Inc., v. Realty Mart, Inc. 207 USPQ 960, 964 (TTAB 1980); Molenaar, Inc. v. Happy Toys Inc., 188 USPQ 469 (TTAB 1975); In re Cresco Mfg. Co., 138 USPQ 401 (TTAB 1963); In re Energy Telecommunications & Electrical Association, 222 USPQ 350 (TTAB 1983). TMEP §1207.01(b)(iv).  In sum, the examining attorney finds that applicant’s proposed mark so resembles the registered mark in relation to sound, appearance, and meaning that confusion as to source is likely.

 

Comparison of the Respective Goods and/or Services

The goods and/or services are compared to determine whether they are similar, commercially related, or travel in the same trade channels.  See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).  It is well settled that the compared products and/or services need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i).  They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).

 

Where the marks of the respective parties are identical or highly similar, the relationship between the goods and/or services of the respective parties need not be as close to support a finding of likelihood of confusion as might apply where differences exist between the marks. In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001); Amcor, Inc. v. Amcor Industries, Inc., 210 USPQ 70, 78 (TTAB 1981); TMEP §1207.01(a).  In addition, the Office must also consider any goods or services in the registrant’s normal fields of expansion in order to determine whether the registrant’s goods or services are related to the applicant’s identified goods or services for purposes of analysis under Section 2(d).  In re General Motors Corp., 196 USPQ 574 (TTAB 1977).  The test is whether purchasers would believe the product or service is within the registrant’s logical zone of expansion.  CPG Prods. Corp. v. Perceptual Play, Inc., 221 USPQ 88 (TTAB 1983); TMEP §1207.01(a)(v).

 

The examining attorney refuses registration of the mark STORABLE because the channels of trade in which the applicant’s goods and services travel are similar to those used by the registrant.  The applicant’s goods and services are identified as:

Downloadable computer software for self-storage facilities, namely, software used for business management, revenue management, accounting, rental reservations, maintaining customer records and rental agreements, customer service, creating websites and online marketing materials, and controlling building environment, access and security systems;

Providing a website for searching, comparing prices and features, reading and writing reviews, listing for rent, and reserving self-storage units, portable storage units, transport and storage services, and vehicle storage services; promoting the goods and services of others by providing a website featuring links to providers of self-storage, portable storage, moving truck rental, transport and storage services, and vehicle storage services; providing an online marketplace for buyers and sellers of storage space;

Insurance services, namely, underwriting, issuance and administration of renters insurance in the field of storage; electronic payment processing services for owners of self-storage facilities; and

Software as a service (SaaS) services featuring software for self-storage facilities, namely, software used for business management, revenue management, accounting, rental reservations, maintaining customer records and rental agreements, customer service, creating websites and online marketing materials, and controlling building environment, access and security systems; designing and creating web sites for others in the field of self-storage

 

The services named in the registration comprise “retail store services in the field of household accessories, storage items, storage systems and space organizers”. 

 

When analyzing an applicant’s and registrant’s goods and services for similarity and relatedness, that determination is based on the description of the goods and services stated in the application and registration at issue, not on extrinsic evidence of actual use.  See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)). 

 

Absent restrictions in an application or registration, the identified goods and services are presumed “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)).  In this case, the identifications set forth in the application and registration have no restrictions as to their nature, type, channel of trade or class of purchasers.  Therefore, it is presumed that these goods and services travel in the same channels of trade to the same class of purchasers.

 

In the self-storage industry it is common for providers to storage space to also provide a host of ancillary services including insurance, retail services featuring storage items, and reserving storage space.  As evidence that consumers are accustomed to a single source identifier in relation to both the applicant’s and the registrant’s products and services, the examining attorney encloses six (6) separate trademark registrations in which the same mark is used in relation to all of these products and services.  These printouts have probative value to the extent that they serve to suggest that the identified products and services are of a kind that may emanate from a single source.  In re Infinity Broadcasting Corp. of Dallas, 60 USPQ2d 1214, 1218 (TTAB 2001), citing In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); and In re Mucky Duck Mustard Co., Inc., 6 USPQ2d 1467, 1470 at n.6 (TTAB 1988).  As additional evidence establishing that storage facilities provide a wide range of services including software for making reservations, insurance, and retail store services featuring packing supplies and that these services are found in the same channels of trade, marketed to the same consumers, and commonly produced by the same entity under the same mark, the examining attorney refers to the attached webpages of CUBESMART[1] YAZZLE[2] and UHAUL[3] showing such use.  Evidence obtained from the Internet may be used to support a determination under Section 2(d) that goods and services 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); In re G.B.I. Tile & Stone, Inc., 92 USPQ2d 1366, 1371 (TTAB 2009). 

 

In light of this evidence and the required presumptions under the relevant case law, the examining attorney must find that the respective goods and services are related in that they are consistently found in the same channels of trade and marketed to, or encountered by, the same consumers under a single mark—a situation that would necessarily give rise to a mistaken belief by consumers that these goods and services come from a common source, when in fact, they do not.  As such, the respective goods and services are considered related for purposes of likelihood of confusion analysis.

 

In sum, given the similarity between the respective marks when viewed in light of the relatedness between the respective goods and services as well as the similarity between the channels of trade for such goods and services, it is likely that consumers will be confused as to the ultimate source of these products and services and associate the registered mark with the applicant’s proposed mark.  Accordingly, the examining attorney refuses registration of the applicant’s proposed mark pursuant to Section 2(d) of the Trademark Act.

 

Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.

 

II.        INFORMALITIES

 

If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following issue(s):

 

Application Refused—Applicant Improperly Identified the Goods and/or Services

The applicant has provided this Office with the following identification:

 

Downloadable computer software for self-storage facilities, namely, software used for business management, revenue management, accounting, rental reservations, maintaining customer records and rental agreements, customer service, creating websites and online marketing materials, and controlling building environment, access and security systems, in International Class 009;

 

Providing a website for searching, comparing prices and features, reading and writing reviews, listing for rent, and reserving self-storage units, portable storage units, transport and storage services, and vehicle storage services; promoting the goods and services of others by providing a website featuring links to providers of self-storage, portable storage, moving truck rental, transport and storage services, and vehicle storage services; providing an online marketplace for buyers and sellers of storage space, in International Class 035;

 

Insurance services, namely, underwriting, issuance and administration of renters insurance in the field of storage; electronic payment processing services for owners of self-storage facilities, in International Class 036; and

 

Software as a service (SaaS) services featuring software for self-storage facilities, namely, software used for business management, revenue management, accounting, rental reservations, maintaining customer records and rental agreements, customer service, creating websites and online marketing materials, and controlling building environment, access and security systems; designing and creating web sites for others in the field of self-storage, in International Class 042.

 

The current identification needs clarification because it could include services classified in other international classes. See TMEP §§1402.01, 1402.03.  Specifically, the proper classification of the service of making reservations and bookings for self-storage or warehouse space is International Class 039, while providing listings storage space for rent depends on its nature.  For example, providing a web site featuring on-line classified advertisements for storage space posted by users is properly classified in International Class 035, while providing information about storage space for lease by means of the Internet is properly classified in International Class 039.

 

Accordingly, as more fully detailed below, the applicant must (1) add one or more International Class(es) to the application, and reclassify the goods and services therein, or (2) delete the goods and services from the application.  See 37 C.F.R. §§2.86, 6.1; TMEP §§1403 et seq.  If the applicant adds one or more International Classes to the application, the applicant must comply with the multiple-class requirements specified in this Office action.

 

In addition, the wording in the recitation of goods and services is unacceptable as indefinite and must be clarified. TMEP §1402.01.  Based on the applicant’s description, the examining attorney cannot determine some of the functionality of the software goods and services, the kind, type or nature of the payment processing services, or the kind, type or nature of the website services regarding storage.  The language the applicant used fails to adequately describe these products and services such that the average person would readily understand what the goods and services are. 

 

The applicant must amend the recitation to specify the common, ordinary commercial name of the goods and services.  If there is no common commercial name for the products and services, the applicant must adequately describe the nature of the goods and services, using wording that would be generally understood by the average person.  See Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954); Schenley Indus., Inc. v. Battistoni, 112 USPQ 485, 486 (Comm’r Pats. 1957); TMEP §1402.01.  In such a case, the applicant should describe the nature of the goods and services and their main purpose, as well as indicate the channel of trade, intended consumer and intended use(s). 

 

The bolded additions to the identifications below are to clarify the kind, type or nature of the goods and services.  The applicant may amend the identification to substitute the following wording, if accurate: 

 

Proposed identification for International Class 009:

 

Downloadable computer software for self-storage facilities, namely, downloadable software used for business management, revenue management, accounting, making rental reservations, maintaining customer records and rental agreements, customer service in the nature of tracking and responding to customer inquiries, creating websites and online marketing materials, and controlling building environment, access and security systems.

 

Proposed identification for International Class 035:

 

Promoting the goods and services of others by providing a website featuring price-comparison information and ratings, reviews and recommendations posted by users of transport and storage services and vehicle storage services provided by others; Providing a web site featuring on-line classified advertisements for storage space posted by users; Promoting the goods and services of others by providing a website featuring links to providers of self-storage and portable storage facilities, moving truck rental services, transport and storage services for the goods of others, and vehicle storage services; providing an online marketplace for buyers and sellers of storage space.

 

Proposed identification for International Class 036:

 

Insurance services, namely, underwriting, issuance and administration of renters insurance in the field of storage; Electronic payment processing services for owners of self-storage facilities, namely, ___________________ [applicant must describe and specify the nature of the service using its common commercial name e.g. Charge card and credit card payment processing services for owners of self-storage facilities, Providing electronic processing of ACH and credit card transactions and electronic payments for owners of self-storage facilities via a global computer network, Providing electronic processing of credit card transactions and electronic payments for owners of self-storage facilities via a global computer network].

 

Proposed identification for International Class 039:

 

Providing a website of storage listings for rent, and for making reservations for self-storage units, portable storage units, transport and storage services, and vehicle storage services, namely, ___________________ [applicant must describe and specify the nature of the service using its common commercial name e.g. Making reservations and bookings for self-storage or warehouse space, Making bookings and reservations for the transport and storage of goods by others by means of a website, Making reservations and bookings for vehicle storage services, Making reservations and bookings for space at self-storage facilities for others, Making reservations and bookings for rental of portable storage units for others].

 

Proposed identification for International Class 042:

 

Software as a service (SaaS) services featuring software for self-storage facilities, namely, providing temporary use of non-downloadable software used for business management, revenue management, accounting, making rental reservations, maintaining customer records and rental agreements, customer service in the nature of tracking and responding to customer inquiries, creating websites and online marketing materials, and controlling building environment, access and security systems; Designing and creating web sites for others in the field of self-storage.

 

PLEASE NOTE:  General Guidelines Regarding the Scope of Acceptable Identification Amendments

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  The applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; for example, an applicant may amend an identification or recitation from the more general to the specific; it may not amend from the specific to the more general. TMEP §§1402.06(b).

 

The applicant however may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).   Thus, the applicant may not subsequently amend the identification to include any product or service that is not within the scope of the goods and/or services originally set forth in the application or a previously accepted identification amendment thereto.

 

Online Identification Reference Provided by the USPTO

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.

 

Requirements for a Multiple-Class Application

The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(1)       List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.

 

(2)       Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule).  The application identifies goods and/or services that are classified in at least five (5) international classes; however, applicant submitted a fee(s) sufficient for only four (4) international classes.  Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

Applicant’s Response

There is no required format or form for responding to an Office action.  For this application to proceed further, the applicant must explicitly address each refusal and/or requirement raised in this Office action.  If the action includes a refusal, the applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register.  The applicant may also have other options specified in this Office action for responding to a refusal and should consider those options carefully.  To respond to requirements and certain refusal response options, the applicant should set forth in writing the required changes or statements.  For more information and general tips on responding to USPTO Office actions, response options, and how to file a response online, Please see “Responding to Office Actions” and the informational video “Response to Office Action” on the USPTO’s website.

 

If the applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end and the trademark will fail to register.  See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a); TMEP §§718.01, 718.02.  Additionally, the USPTO will not refund the application filing fee, which is a required processing fee.  See 37 C.F.R. §§2.6(a)(1)(i)-(iv), 2.209(a); TMEP §405.04.

 

When an application has abandoned for failure to respond to an Office action, an applicant may timely file a petition to revive the application, which, if granted, would allow the application to return to active status.  See 37 C.F.R. §2.66; TMEP §1714.  The petition must be filed within two months of the date of issuance of the notice of abandonment and may be filed online via the Trademark Electronic Application System (TEAS) with a $100 fee.  See 37 C.F.R. §§2.6(a)(15)(ii), 2.66(a)(1), (b)(1)

 

Responses to Office actions must be properly signed.  See 37 C.F.R. §§2.62(b), 2.193(e)(2); TMEP §§712, 712.01.  If an applicant is not represented by an attorney, the response must be signed by the individual applicant or someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner).  See 37 C.F.R. §2.193(e)(2)(ii); TMEP §§611.03(b), 611.06(b)-(h), 712.01.  In the case of joint applicants, all must sign.  37 C.F.R. §2.193(e)(2)(ii); TMEP §611.06(a). 

 

If an applicant is represented by an attorney authorized to practice before the USPTO, the attorney must sign the response.  37 C.F.R. §2.193(e)(2)(i); TMEP §§611.03(b), 712.01.  The only attorneys who may sign responses and otherwise 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 U.S. commonwealths/territories; and (2) certain Canadian agents and/or attorneys.  See 37 C.F.R. §§2.17(e), 11.14(a), (c); TMEP §602.  If an applicant changes attorneys, the newly retained attorney may not sign responses until the applicant files a new power and/or revocation of attorney.  See 37 C.F.R. §2.18(a)(7); TMEP §604.03.

 

If an applicant is initially represented by an attorney, and then later retains another attorney from a different firm, the newly retained attorney may not sign responses until the applicant files a new power and/or revocation of attorney.  See 37 C.F.R. §2.18(a)(7); TMEP §604.03.

 

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.  If the applicant has technical questions about the TEAS response to Office action form, applicant can review the electronic filing tips available online at http://www.gov.uspto.report/teas/eFilingTips.htm and email technical questions to TEAS@uspto.gov.

 

If the applicant or its appointed attorney has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

/Michael Tanner/

Michael Tanner

Trademark Attorney

Law Office 119

Telephone: 571-272-9706

Email: Michael.Tanner@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.