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:  March 26, 2020

 

The Office has received the applicant’s communication filed on December 12, 2019.  The assigned examining attorney has reviewed the prosecution history of the referenced application and determined the following.

 

Prosecution History

In a previous Office Action, the examining attorney: 1) refused registration pursuant to Section 2(d). 

 

In its response, the applicant: (1) claimed ownership of the cited registrations because they are related entities, and (2) provided certain information about its U.S. licensed counsel.  The applicant’s attorney information and claim of ownership are both accepted and made part of this application.  Accordingly, the prior Section 2(d) refusal concerning U.S. Registration Nos. 4453077 and 4460741 is hereby deemed OVERCOME.

 

It is noted that the applicant’s foreign registration that serves as support for its Section 44 filing basis has expired.  Accordingly, the examining attorney issues this NON-FINAL OFFICE ACTION noting the following.

 

Application Refused—Foreign Registration That Supports Section 44(e) Filing Basis Will Expire Shortly

The application specifies Trademark Act Section 44(e) as the sole filing basis.  See 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3).  Although the application includes a copy of a foreign registration, the foreign registration on which this application is based will expire on April 19, 2020.  For an application filed under Section 44(e), the foreign registration must be in force at the time the United States issues a registration based on that foreign registration.  37 C.F.R. §2.34(a)(3)(iii); In re Societe D’Exploitation de la Marque Le Fouquet’s, 67 USPQ2d 1784, 1788-89 (TTAB 2003); TMEP §1004.01(a).

 

Therefore, the applicant must provide a certificate of renewal or other certification from the intellectual property office of the foreign country or a copy of the foreign registration that shows that the foreign registration has been renewed and will be in force at the time the registration issues in the United States.  37 C.F.R. §2.34(a)(3)(iii); TMEP §1004.01(a).  If the certificate of renewal or other certification is not written in English, applicant must also provide an English translation.  See 37 C.F.R. §2.34(a)(3)(iii); TMEP §1004.01(a)-(b).  The translation should be signed by the translator.  See TMEP §1004.01(b).

 

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 a U.S.-licensed 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 a U.S.-licensed 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 are (1) attorneys in good standing with a bar of the highest court of any U.S. state or territory, or (2) Canadian trademark attorneys or agents reciprocally recognized by the USPTO’s Office of Enrollment and Discipline (OED) who are appointed in connection with a U.S.-licensed attorney.  See 37 C.F.R. §§2.17(a), 11.14(a), (c), (e).  Foreign attorneys, other than recognized Canadian trademark attorneys or agents, do not have authority to sign responses.  See 37 C.F.R. §§2.17(e), 11.14(c)(1), (e).  If an applicant is initially represented by an attorney, and then later retains another U.S.-licensed 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.  Please Note:  In all cases, the signer must be identified by first and last name and title or position.  37 C.F.R. §2.193(d).

 

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

 

How to respond.  Click to file a response to this nonfinal Office action.

 

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 March 26, 2020 for

U.S. Trademark Application Serial No. 88365471

 

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. 

 

 

Michael Tanner

Trademark Attorney

Law Office 119

USPTO

571-272-9706

michael.tanner@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 March 26, 2020, 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.”