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:  February 26, 2020

 

INTRODUCTION

 

This Office action is supplemental to and supersedes the previous Office action issued on July 29, 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 requirement/refusal:  Drawing amendment and mark description not accepted due to material alteration.  See TMEP §§706, 711.02. 

 

In a previous Office action dated July 29, 2019, the trademark examining attorney required applicant to satisfy the following requirements:  clarify the mark description and provide a new drawing of the mark.

 

The following is a SUMMARY OF ISSUES that applicant must address:

 

•         NEW ISSUE:  Material Alteration of Mark Drawing Refused

•         Amended Drawing Requirement

•         Amended Mark Description Requirement

 

Applicant must respond to all issues raised in this Office action and the previous July 29, 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).

 

MATERIAL ALTERATION OF MARK DRAWING REFUSED

 

Applicant has requested to amend the mark in the application.  The USPTO cannot accept the proposed changes because they would materially alter the mark in the drawing filed with the original application.  37 C.F.R. §2.72(a)(2), (b)(2); TMEP §807.14.  Accordingly, the proposed amendment will not be entered; the previous drawing of the mark will remain operative and the initial drawing is still not acceptable.  See TMEP §807.17. 

 

The original drawing shows the mark as a three-dimensional configuration comprising of a tap handle for dispensing beer and ale in the shape of a trout with a stylized splash of water at the tail end of the trout and the word “SWEETWATER” on the base of the handle.  The proposed amended drawing would eliminate the word “SWEETWATER” from the drawing of the mark. 

 

The USPTO cannot accept an amendment to a mark if it will materially alter the mark in the drawing filed with the original application, or in a previously accepted amended drawing.  37 C.F.R. §2.72(a)(2), (b)(2); TMEP §807.14.  An amendment to the mark is material when the USPTO would need to republish the mark with the change in the USPTO Trademark Official Gazette to fairly present the mark to the public.  In re Thrifty, Inc., 274 F.3d 1349, 1352, 61 USPQ2d 1121, 1123-24 (Fed. Cir. 2001) (citing In re Hacot-Columbier, 105 F.3d 616, 620, 41 USPQ2d 1523, 1526 (Fed. Cir. 1997)); TMEP §807.14. 

 

That is, an amendment is material if the altered mark does not retain “the essence of the original mark” or if the new and old forms do not “create the impression of being essentially the same mark.”  In re Hacot-Columbier, 105 F.3d at 620, 41 USPQ2d at 1526 (quoting Visa Int’l Serv. Ass’n v. Life-Code Sys., Inc., 220 USPQ 740, 743-44 (TTAB 1983)); see, e.g., In re Who? Vision Sys., Inc., 57 USPQ2d 1211, 1218 (TTAB 2000) (amendment from “TACILESENSE” to “TACTILESENSE” a material alteration); In re CTB Inc., 52 USPQ2d 1471, 1475 (TTAB 1999) (amendment of TURBO with a design to just the typed word TURBO without design a material alteration). 

 

When determining materiality, the addition of any element that would require a further search of the USPTO database for conflicting marks is also relevant.  In re Guitar Straps Online LLC, 103 USPQ2d 1745, 1747 (TTAB 2012) (citing In re Pierce Foods Corp., 230 USPQ 307, 308-09 (TTAB 1986)); In re Who? Vision Sys. Inc., 57 USPQ2d at 1218-19; TMEP §807.14.

 

In the present case, applicant’s proposed amendment would materially alter the mark in the drawing filed with the original application because it would remove the distinctive wording “SWEETWATER” from the mark.

 

To avoid the application from abandoning, applicant must respond to this issue.  TMEP §807.17.  Applicant may respond by (1) withdrawing the request to amend the drawing, or (2) arguing that the proposed amendment is not a material alteration of the mark.

 

For more information about changes to the mark in the drawing after the application filing date, please go to the Drawing webpage.

 

AMENDED DRAWING OF THE MARK

 

The proposed drawing amendment is refused for the reasons discussed above, thus the original drawing of the mark will remain operative which is still not acceptable and the requirement for an acceptable amended drawing is maintained and continued.

 

Applicant must submit a new drawing showing the grey shading at the top of the drawing deleted from the mark because it does not appear to be part of the mark.  This matter is not part of the mark.  See 37 C.F.R. §2.72; TMEP §§807.02, 807.14(a). 

 

Although applicant must delete this matter, applicant may not make any other changes or amendments that would materially alter the applied-for mark on the drawing.  See 37 C.F.R. §2.72; TMEP §§807.14 et seq. 

 

Additionally, the wording “SWEETWATER” does not appear in full on the mark although it is referenced in the mark description and appears to be part of the mark.  Therefore, applicant must submit a new drawing showing the mark with the word “SWEETWATER” in full.

 

If the mark cannot be adequately depicted in a single rendition, applicant must file a petition to the Director requesting that the requirement to provide a single rendition of the mark be waived.  TMEP §§807.10, 1202.02(c)(iv).

 

For more information about changes to the mark in the drawing after the application filing date, see the Drawing webpage.

 

For the reasons discussed above, the requirement for an acceptable amended drawing is maintained and continued.

 

AMENDED DESCRIPTION OF MARK REQUIRED

 

The proposed drawing amendment is refused for the reasons discussed above, thus the proposed amended mark description removing the wording “SWEETWATER” is also refused and the original mark description will remain operative which is still not acceptable and the requirement for an acceptable amended mark description is maintained and continued.

 

Applicant has applied for a three-dimensional mark; however, applicant did not include a sufficient description of the mark in the application.  Therefore, applicant must provide a clear, concise, and complete description of the mark that does the following:

 

(1)        Indicates the mark is a three-dimensional configuration of the goods or packaging or of a specific design feature of the goods or packaging.

 

(2)        Specifies all the elements in the drawing that constitute the mark and are claimed as part of the mark.

 

(3)        Specifies any elements that are not part of the mark and indicates that the matter shown in broken or dotted lines is not part of the mark and serves only to show the position or placement of the mark. 

 

See 37 C.F.R. §§2.37, 2.52(b)(2), (b)(4); In re Famous Foods, Inc., 217 USPQ 177, 177 (TTAB 1983); TMEP §§807.08, 807.10, 1202.02(c)(ii). 

 

The following is suggested:

 

The mark consists of a three-dimensional configuration comprising of a tap handle for dispensing beer and ale in the shape of an upward facing trout with a stylized representation of a splash of water at tail end of the trout and the word “SWEETWATER” also appearing at the base of the handle, all extending upward from the beer faucet. The broken lines depicting lower and back portion of the tap handle which attaches to the keg indicate placement of the mark on the goods and are not part of the mark.

 

For the reasons discussed above, the requirement for an acceptable amended mark description is maintained and continued.

 

RESPONSE GUIDELINES

 

Response guidelines.  For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  For a requirement, applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06. 

 

The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

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

 

 

/Marta Stadeli/

Examining Attorney

Law Office 123

(571) 272-6747

marta.stadeli@uspto.gov

 

 

 

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 February 26, 2020 for

U.S. Trademark Application Serial No. 88371684

 

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. 

 

 

/Marta Stadeli/

Examining Attorney

Law Office 123

(571) 272-6747

marta.stadeli@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 February 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.”