To: | Plein, Philipp (nwells@legendslaw.com) |
Subject: | U.S. Trademark Application Serial No. 88392234 - PP - 4862.28 |
Sent: | January 11, 2020 03:51:35 PM |
Sent As: | ecom122@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88392234
Mark: PP
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Correspondence Address:
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Applicant: Plein, Philipp
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Reference/Docket No. 4862.28
Correspondence Email Address: |
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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: January 11, 2020
This Office action is supplemental to and supersedes the previous Office action issued on July 8, 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: Amendment to Add Section 44(d) Priority Claim Invalid. See TMEP §§706, 711.02. The trademark examining attorney apologizes for any inconvenience caused by the delay in raising this issue.
The following is a SUMMARY OF ISSUES that applicant must address:
• NEW ISSUE: Refusal: Amendment to Add Section 44(d) Priority Claim Invalid
Applicant must respond to all issues raised in this Office action and the previous July 8, 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).
PARTIAL REFUSAL - AMEND TO ADD 44(d) PRIORITY CLAIM INVALID
THIS PARTIAL REFUSAL APPLIES TO CLASSES 3 AND 24 ONLY
In Applicant’s September 11, 2019, response, applicant requested that the U.S. application be amended to add a claim of priority under Trademark Act Section 44(d) as an additional filing basis for Classes 3 and 24. Although the U.S. application was properly filed within six months of the foreign filing, applicant did not claim priority within six months of the foreign application filing date; therefore the priority claim is invalid and cannot be accepted. TMEP §1003.02. Specifically, the foreign application was filed on March 8, 2019; however, the claim of priority was asserted on September 11, 2018.
To receive a priority date in a U.S. application based on a previously filed foreign application, the claim of priority must be filed within six months of the filing date of the foreign application. 37 C.F.R. §§2.34(a)(4)(i), 2.35(b)(5); TMEP §806.01(c); see 15 U.S.C. §1126(d)(1).
Because the application specifies both an intent to use basis under Trademark Act Section 1(b) and a claim of priority under Section 44(d) based on a foreign application, but applicant cannot satisfy the requirements of a Section 44(d) priority claim, applicant may request that the mark be approved for publication based solely on the Section 1(b) basis. See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.35(b)(1); TMEP §§806.02(f), 806.04(b), 1003.04(b). Although the mark may be approved for publication on the Section 1(b) basis, it will not register until an acceptable allegation of use has been filed. See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103.
For this application to proceed toward registration, applicant must explicitly address each refusal and/or requirement raised in this Office action. If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register. Applicant may also have other options for responding to a refusal and should consider such options carefully. To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements.
In such case, the application will then proceed with the following classes only: 12, 20, 21, 27, and 28. See TMEP §718.02(a).
If 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, the trademark will fail to register, and the application fee will not be refunded. See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a), 2.209(a); TMEP §§405.04, 718.01, 718.02. Where the application has been abandoned for failure to respond to an Office action, applicant’s only option would be to file a timely 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. There is a $100 fee for such petitions. See 37 C.F.R. §§2.6, 2.66(b)(1).
If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney. All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response. See 37 C.F.R. §2.191; TMEP §§304.01-.02, 709.04-.05. Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights. See TMEP §§705.02, 709.06.
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.
/C. Scott Strickland/
C. Scott Strickland
Examining Attorney
Law Office 122
571-272-3277
scott.strickland@uspto.gov
RESPONSE GUIDANCE