To: | Aeneas Limited (trademark@ideaintellectual.com) |
Subject: | U.S. Trademark Application Serial No. 88364490 - IP - TM1148US00 |
Sent: | July 22, 2019 12:44:16 PM |
Sent As: | ecom123@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88364490
Mark: IP
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Correspondence Address: SAM YIP; IDEA INTELLECTUAL LIMITED |
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Applicant: Aeneas Limited
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Reference/Docket No. TM1148US00
Correspondence Email Address: |
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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 22, 2019
This Office action is supplemental to and supersedes the previous Office action issued on May 21, 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 refusal: Foreign Registration Not From Country of Origin. See TMEP §§706, 711.02.
In a previous Office action dated May 21, 2019, applicant was required to satisfy the following requirements: Identification of Services Amendment Required, Foreign Registration Required, Mark Description Amendment Required and Disclaimer Required.
Based on applicant’s response, the trademark examining attorney notes that the following requirements have been satisfied: Identification of Services Amendment Requirement, Foreign Registration Requirement, and Disclaimer Requirement. See TMEP §713.02.
The following is a SUMMARY OF ISSUES that applicant must address:
• NEW ISSUE: FOREIGN REGISTRATION NOT FROM COUNTRY OF ORIGIN
• Mark Description Amendment Required—Continued and Maintained
Applicant must respond to all issues raised in this Office action and the previous May 21, 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: FOREIGN REGISTRATION NOT FROM COUNTRY OF ORIGIN
Registration is refused under Trademark Act Section 44(e) because the foreign registration is not from applicant’s country of origin. See 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §1002.01. Specifically, applicant has submitted a foreign registration from Hong Kong to support applicant’s Section 44(e) basis; however, the application shows that applicant is domiciled, incorporated, or organized in the Cayman Islands.
To obtain registration under Section 44(e), an applicant must be the owner of a valid registration from the applicant’s country of origin. 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §1002.01. Under Section 44(c), “country of origin” is defined as the country in which an applicant (1) is domiciled, (2) has a bona fide and effective industrial or commercial establishment, or (3) is a national. 15 U.S.C. §1126(c); TMEP §1002.04.
Because applicant is domiciled, incorporated, or organized in a country different from the country that issued the foreign registration, applicant must establish that, as of the date of issuance of the foreign registration, the country that issued the foreign registration is also applicant’s country of origin. See 15 U.S.C. §1126(c); TMEP §1002.04.
Thus, to overcome this refusal, applicant may provide the following written statement for the record: “Applicant has had a bona fide and effective industrial or commercial establishment in Hong Kong as of the date of issuance of the foreign registration.” TMEP §1002.04. If applicant cannot assert that such country is a country of origin, applicant may delete the Section 44(e) basis and rely solely on Section 1(b) as a basis. See 15 U.S.C. §§1051(b) 1126(e); 37 C.F.R. §2.35(b); TMEP §806.04.
MARK DESCRIPTION AMENDMENT REQUIRED—CONTINUED AND MAINTAINED
Applicant must submit an amended description of the mark because the current one is incomplete and does not describe all the significant aspects of the mark. 37 C.F.R. §2.37; see TMEP §§808.01, 808.02. Descriptions must be accurate and identify all the literal and design elements in the mark. See 37 C.F.R. §2.37; TMEP §§808 et seq .
The following description is suggested, if accurate: The mark consists of a five-sided polygon contains a stylized letter "I" in gold color forming the left portion of the polygon, a "P" in white color in the middle portion, and a right portion in blue color. The other white in the mark is background and is not claimed as a feature.
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.
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
/Collier L. Johnson II/
Examining Attorney
Law Office 123
571-270-0878
collier.johnson@uspto.gov
RESPONSE GUIDANCE