Examiners Amendment

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

EXAMINER’S AMENDMENT

 

ISSUE/MAILING DATE: 6/12/2019

 

 

APPLICATION HAS BEEN AMENDED:  In accordance with the authorization granted by Avneel Avikash Prasad on June 12, 2019, the trademark examining attorney has amended the application as indicated below.  Please advise the undersigned immediately of any objections.  Otherwise, no response is necessary.  TMEP §707.  Any amendments to the identification of goods and/or services may clarify or limit the goods and/or services, but may not add to or broaden the scope of the goods and/or services.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq.

 

 

CLARIFICATION OF ENTITY

 

Applicant has clarified its entity type for the record by specifying that it is a SOLE PROPRIETORSHIP as follows:

 

 

Ace Kava Exporters, a Fiji sole proprietorship, composed of Avneel Avikash Prasad, a citizen of Fiji.

 

See 37 C.F.R. §2.32(a)(3); TMEP §§803.03 et seq.

 

 

COLOR CLAIM AND MARK DESCRIPTION CLARIFICATION

 

The following statements describing color in the mark are added to the record:

 

The colors GREEN, BROWN, WHITE are claimed as a feature of the mark. 

 

The mark consists of the following: 

 

The mark consists of a brown bowl with a white interior partially visible and a green pattern located along and inside the top part of the white portion within the bowl, and also a design in the shape of a kava leaf appears primarily in the color white color with green and brown highlights and is located at the center of the bowl, which in turn is located above the words "KAVA TIME" written in brown color.

 

37 C.F.R. §2.52(b)(1); TMEP §807.07(a)(i), (a)(ii).

 

 

DISCLAIMER

 

 

The following disclaimer statement is added to the record:

 

            No claim is made to the exclusive right to use “KAVA” apart from the mark as shown.

 

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

 

 

WHAT HAPPENS NEXT 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.

 

 

 

REGISTRATION MAINTENANCE INFORMATION

Trademark registrations must be renewed to remain active; that is, the registration owner must file the proper registration maintenance documents and fees within specific time periods.  See 15 U.S.C. §§1058, 1059; 37 C.F.R. §§2.160, 2.161, 2.183; TMEP ch. 1600.  If these maintenance documents are not timely and properly filed by the owner, the trademark registration will be cancelled and/or expired, and the owner will have to file a new trademark application and begin the process again of seeking a registration.  Notice of these registration maintenance requirements is provided on the certificate of registration, which is the only notice provided by the USPTO.  37 C.F.R. §2.162; TMEP §1604.02. 

Between the fifth and sixth year after registration, the registration owner must file a Trademark Act Section 8 affidavit of use that includes fees and a specimen, among other things.  However, there is a 6-month grace period after the sixth year in which the Section 8 affidavit can be filed for an additional fee.  15 U.S.C. §1058; 37 C.F.R. §§2.160, 2.161.

Between the ninth and tenth year after registration, and at the end of each successive 10-year period after the date of registration (between the 19th and 20th year, the 29th and 30th year, etc.), the owner must file both a Section 8 affidavit and a renewal application under Section 9.  There is also a 6-month grace period to file these documents, for an additional fee.  15 U.S.C. §§1058, 1059; 37 C.F.R. §§2.160, 2.161, 2.183.

The deadline for filing proper registration maintenance documents cannot be waived on petition.  See, e.g., In re Holland Am. Wafer Co., 737 F.2d 1015, 1018, 222 USPQ 273, 275 (Fed. Cir. 1984); In re Mother Tucker's Food Experience (Can.) Inc., 925 F.2d 1402, 1406, 17 USPQ2d 1795, 1798 (Fed. Cir. 1991).

For more information about maintaining a registration, consult the USPTO website at http://www.gov.uspto.report/trademarks/process/maintain/prfaq.jsp.  Forms for filing maintenance documents are available at http://www.gov.uspto.report/trademarks

 

RESPONSE GUIDELINES

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

 

/Ronald E. DelGizzi/

Trademark Examining Attorney

Law Office 107

Phone - (571) 272-2754

ronald.delgizzi@uspto.gov

 

 

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 Trademark Electronic Application System (TEAS) form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.

 

 

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 6/12/2019 FOR U.S. APPLICATION SERIAL NO.88360119

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.gov.uspto.report/, enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.