Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

FINAL 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) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

 

Issue date:  December 11, 2019

 

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on December 3, 2019.

 

In a previous Office action dated November 19, 2019, the trademark examining attorney refused registration of the applied-for mark based on Trademark Act Section 1, 2 and 45 because the mark, as used of the specimen of record, fails to function as a trademark, and based on Trademark Act Sections 1 and 45 because the specimen fails to show the applied-for mark in use in commerce with any of the good in the notice of allowance.  The trademark examining attorney maintains and now makes FINAL these refusals.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

SUMMARY OF ISSUES MADE FINAL THAT APPLICANT MUST ADDRESS:

 

• Refusal – Failure to Function
• Refusal – Specimen Fails to Show the Mark in Use in Commerce – Printer’s Proof

 

REFUSAL – FAILURE TO FUNCTION

 

The refusal to register is now made final because the applied-for mark, as used on the specimen of record, does not function as a trademark to indicate the source of applicant’s goods and to identify and distinguish them from others.  Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§1051-1052, 1127; see In re Phoseon Tech., Inc., 103 USPQ2d 1822, 1827-28 (TTAB 2012); In re Remington Prods., Inc., 3 USPQ2d 1714, 1715 (TTAB 1987); TMEP §§904.07(b); 1202 et seq.

 

Applicant did not address the refusal in its application, and indicated that it intended to abandon the application.  Accordingly, there exists no basis upon which the refusal may be withdrawn, and the refusal is now made final.

 

REFUSAL – SPECIMEN FAILS TO SHOW MARK IN USE IN COMMERCE – PRINTER’S PROOF

 

The refusal to register is also made final because the specimen in International Class 013 is a printer’s proof and thus does not show the applied-for mark in use in commerce for each international class.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a), 1301.04(a), (g)(i).  Generally, printer’s proofs and internal design documents are preliminary copies of documents used internally to make corrections before publication or fabrication.  Proofs and design illustrations are usually not disseminated to the public, and thus do not show use in commerce of the mark in connection with the identified goods.  See 15 U.S.C. §1127; In re The Signal Cos., 228 USPQ 956, 957-58 n.4 (TTAB 1986); TMEP §§904.04(a), 904.07(a), 1301.04(a). 

 

Applicant did not address the refusal in its application, and indicated that it intended to abandon the application.  Accordingly, there exists no basis upon which the refusal may be withdrawn, and the refusal is now made final.

 

ADVISORY – TO EXPRESSLY ABANDON THE APPLICATION

 

In applicant’s response, applicant “requests abandonment” of the application.  Applicant may immediately abandon as follows:

 

Applicant can expressly abandon the application (i.e., withdraw a pending application and end the application process) using the TEAS Request for Express Abandonment (Withdrawal) of Application form.  This form must be properly signed by the applicant or, if represented by an authorized attorney, by the applicant’s attorney.  See 37 C.F.R. §§2.68(a), 2.193(e)(2); TMEP §§611.03(b), 718.01.  Once filed, a request for abandonment may not be withdrawn.  37 C.F.R. §2.68(a).

 

If applicant does nothing, the application will automatically abandon six months after the issuance of this office action.  No action is required by applicant for abandonment to occur in this case.

 

 

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 request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).

 

 

/Christina M. Riepel/

Trademark Examining Attorney

Law Office 124

(571) 272-6358

christina.riepel@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 December 11, 2019 for

U.S. Trademark Application Serial No. 88375596

 

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. 

 

 

/Christina M. Riepel/

Trademark Examining Attorney

Law Office 124

(571) 272-6358

christina.riepel@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 December 11, 2019, 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.”