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:  September 30, 2019

 

 

 

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.  

 

 

 

This Office action is in response to applicant’s communication filed on September 18, 2019.  Please note that all issues not discussed in this office action have been resolved. 

 

 

The examining attorney maintains and continues the following refusal(s) and/or requirement(s): specimen information. 

 

 

The examining attorney issues this Office action because of a new issue(s) raised in the applicant’s response.

 

 

 

SUMMARY OF ISSUES:

 

• Mark on the drawing and specimen differ.

 

 

 

MARK ON THE DRAWING AND SPECIMEN DIFFER

 

Registration is refused because the specimen does not show the mark in the drawing in use in commerce in International Class 28, which is required in the application or amendment to allege use.  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(g)(i).  The mark appearing on the specimen and in the drawing must match; that is, the mark in the drawing “must be a substantially exact representation of the mark” on the specimen.  See 37 C.F.R. §2.51(a)-(b); TMEP §807.12(a).

 

In this case, the specimen displays the mark in different colors than the drawing.  The mark on the specimen does not match the mark in the drawing because of the color differences between the mark shown on the specimen and the mark shown on the drawing, i.e., gray, gold, and white in the wording on the specimen and no gold outline on the wording and different color in the PHI element in the drawing; the arrow design is also in different colors.  Applicant has thus failed to provide the required evidence of use of the mark in commerce.  See TMEP §807.12(a).

 

Applicant may respond to this refusal by satisfying one of the following:

 

(1)       Submit a new color drawing of the mark that shows the mark on the specimen and an amendment of the description and color claim that agrees with the new drawing.  See 37 C.F.R. §2.72(b).  Applicant may amend the mark in the drawing to match the mark on the specimen but may not make any other changes or amendments that would materially alter the drawing of the mark.  See 37 C.F.R. §2.72(a)-(b); TMEP §807.14.  The following color claim and description are suggested, if accurate:

 

Color claim:  “The colors black, gray, white and gold are claimed as a feature of the mark.”

 

Description:  “The mark consists of the word "MORPHEUS" in black with a gray fading to white and gold outline, with the "PH" exchanged for the upper case Greek PHI symbol in gold with a fade to white.  Underneath the letter "S" in "MORPHEUS" is an archery broadhead in an open position in black, gold, and white. Underneath the entire word "MORPHEUS" is a golden horizontal curved line indicating the broadhead's path from left to right.”

 

(2)       Submit a new black-and-white drawing of the mark and an amendment deleting any color claim and modifying the description to delete any references to color.  The following description is suggested, if accurate:  “The mark consists of the stylized word "MORPHEUS" with the "PH" exchanged for the upper case stylized Greek PHI symbol.  Underneath the letter "S" in "MORPHEUS" is an archery broadhead in an open position. Underneath the entire word "MORPHEUS" is a horizontal curved line indicating the broadhead's path from left to right.”  Applicant may amend the mark in the drawing to delete color but may not make any other changes or amendments that would materially alter the mark on the drawing.  See 37 C.F.R. §2.72(a)-(b); TMEP §807.14.

 

(3)       Submit a different specimen (a verified “substitute” specimen) for each applicable international class that (a) shows the mark in the drawing in actual use in commerce in the colors depicted on the drawing and for the goods and/or services in the application or amendment to allege use, and (b) in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use.

 

Examples of specimens for goods include tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, and displays associated with the actual goods at their point of sale.  See TMEP §§904.03 et seq.  Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods.  TMEP §904.03(i). 

 

For more information about drawings and instructions on how to satisfy these response options online using the Trademark Electronic Application System (TEAS) form, see the Drawing webpage.

 

 

 

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.

 

The United States Patent and Trademark Office (USPTO) website provides information for those unfamiliar with the process of applying for federal trademark registration, such as an e-booklet about registering trademarks, FAQs, and more.  Two tools on the USPTO’s website that are particularly helpful during the examination process are the (1) informational videos and (2) application processing timelines.  The videos provide information in a broadcast news format regarding a range of issues that arise during the examination of an application, such as specimens and goods and services.  The application processing timelines provide information regarding the USPTO’s processing time for certain documents, as well as crucial legal deadlines.

 

The USPTO applies the following legal authority to a trademark application:

 

•  The Trademark Act of 1946 (15 U.S.C. §§1051 et seq.)

 

•  The Trademark Rules of Practice (37 C.F.R. pts. 2, 3, 6, 7, 11)

 

•  Precedential court and Trademark Trial and Appeal Board (TTAB) decisions

 

•  The Trademark Manual of Examining Procedure (TMEP)  is a manual written by USPTO trademark attorneys that explains the laws and procedures applicable to the trademark application, registration, and post-registration processes.  The USPTO updates the TMEP periodically to reflect changes in law, policy, and procedure. 

 

•  The Trademark Trial and Appeal Board Manual of Procedure (TBMP)

 

 

 

APPLICANT MAY WISH TO HIRE A PRIVATE ATTORNEY

 

Because of the legal technicalities and strict deadlines of the trademark application process, applicant may wish to hire a private attorney who specializes in trademark matters to assist in the process.  The assigned trademark examining attorney can provide only limited assistance explaining the content of an Office action and the application process.  USPTO staff cannot provide legal advice or statements about an applicant’s legal rights.  TMEP §§705.02, 709.06.  See Hiring a U.S.-licensed trademark attorney for more information.

 

 

Non-attorneys, e.g., non-attorney persons from a trademark assistance company, are not recognized to practice before the USPTO in trademark matters on behalf of others and thus may not perform any of the following actions:

 

1.  Giving advice to an applicant or registrant in contemplation of filing a trademark application or application-related document.

 

2. Preparing or prosecuting an application, response, post-registration maintenance document, or other related document.

 

3.  Signing amendments to applications, responses to Office actions, petitions to the Director, requests to change the correspondence address, or letters of express abandonment.

 

4. Authorizing issuance of examiner’s amendments and priority actions.

 

See 37 C.F.R. §§11.5(b)(2), 11.14(b); TMEP §§602.01, 608.01. 

 

Employing an individual who is not authorized to practice before the USPTO to represent you in connection with your trademark application may: 

•  Delay and prolong the trademark application examination process. 

            •  Lead to the abandonment of your application.

            •  Jeopardize the validity of any resulting registration. 

See: http://www.gov.uspto.report/trademark/trademark-updates-and-announcements/proper-representation-trademark-matters.

 

BEWARE OF MISLEADING NOTICES SENT BY PRIVATE COMPANIES ABOUT YOUR APPLICATION 

 

Private companies not associated with the USPTO often use public information provided in USPTO trademark applications to mail and email trademark-related offers and notices – most of which require fees.  These companies often have names similar to the USPTO. 

 

All official USPTO correspondence will only be emailed from the domain “@uspto.gov.” 

 

For a current list of companies the USPTO has received complaints about, information on how to identify these offers and notices, and what to do if you receive one, see the misleading notices webpage. 

 

QUESTIONS ABOUT THIS ACTION

If the applicant has technical questions about the TEAS response to Office action form, the applicant can review the electronic filing tips available online at http://www.gov.uspto.report/trademarks/teas/e_filing_tips.jsp and send technical questions to the TEAS Support Team at TEAS@uspto.gov via e-mail.  Please include your name, telephone number, serial number and/or registration number, a description of the issue, including the name of the TEAS form you are having problems with (e.g., “Response to Office Action Form,” “Request for Extension of Time to File a Statement of Use,” etc.), and a screen shot of any error message that you are receiving.  You should receive a response within two (2) hours if the e-mail message is submitted during normal business hours. 

 

For status inquiries or copies of documents, an applicant may check the status of or view documents filed in the trademark and/or service mark application or registration twenty-four (24) hours a day, seven (7) days a week, using the Trademark Status and Document Retrieval (TSDR) database on the USPTO website at http://tsdr.gov.uspto.report/.  To obtain this status or view these documents, enter the application serial number or registration number and click on “Status” or “Documents.”  Do not attempt to check status until approximately four to five (4-5) days after submission of a filing, to allow sufficient time for all USPTO databases to be updated.

 

For all other non-legal matters, including petitions to revive or reinstate an application, please contact the Trademark Assistance Center (TAC).  TAC may be reached by e-mail at TrademarkAssistanceCenter@uspto.gov or by telephone at (800) 786-9199.  For non-technical matters, TAC is open from 8:30 a.m. to 8:00 p.m. Eastern Standard Time (EST), Monday through Friday, except on federal government holidays.  A list of federal government holidays is available at the following website: http://www.opm.gov/policy-data-oversight/snow-dismissal-procedures/federal-holidays/.

 

If applicant has questions regarding the legal issues in this Office action, please call the assigned trademark examining attorney.

 

 

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

 

 

/Brian Pino/

Examining Attorney

Law Office 114

571.272.9209 Telephone

Brian.Pino2@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 September 30, 2019 for

U.S. Trademark Application Serial No. 88391679

 

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. 

 

 

/Brian Pino/

Examining Attorney

Law Office 114

571.272.9209 Telephone

Brian.Pino2@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 September 30, 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.”