To: | Angle Tool Works Inc. (jlp@poznaklaw.com) |
Subject: | U.S. Trademark Application Serial No. 88438287 - ANGLE - N/A |
Sent: | October 08, 2019 04:47:57 PM |
Sent As: | ecom107@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88438287
Mark: ANGLE
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Correspondence Address: |
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Applicant: Angle Tool Works Inc.
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Reference/Docket No. N/A
Correspondence Email Address: |
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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: October 08, 2019
FINAL ACTION
This Office action is in response to applicant’s communication filed on September 18, 2019, in which the applicant amended the identification of goods and proposed an amendment to the mark drawing.
The amended identification is acceptable, and has been entered in the record.
Drawing – Final Requirement
Applicant submitted an amended drawing with the September 18, 2019 response. However, the proposed amendment is also unacceptable because it will not create a high quality image when reproduced.
Like the original mark drawing, the proposed amendment includes excessive white space and extraneous lines. In this case, the extraneous lines appear at the bottom of what appears to be the edge of a scanned/copied page, and along the edges of what appear to be cut outs attached to a larger page. A modified entire page (containing the mark at the top) appears to have been scanned as opposed to just the mark itself. A clear drawing of the mark is an application requirement. 37 C.F.R. §2.52. All lines must be clean, sharp and solid, and not fine or crowded. 37 C.F.R. §§2.53(c), 2.54(e); TMEP §§807.05(c), 807.06(a).
Moreover, the USPTO cannot accept the proposed changes because they would materially alter the mark in the drawing filed with the original application or as previously amended. 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 remains unacceptable. See TMEP §807.17.
While of poor quality, the original drawing shows the mark as the stylized term “LATMAN” appearing in a carrier design. However, the proposed amended drawing adds the additional, searchable wording “ANGLE TOOLS WORKS”, “www.angletoolworks.com”, and “Made in USA”.
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 or as previously amended because it contains additional, searchable wording.
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.
Therefore, the requirement that Applicant must submit a new drawing showing a clear depiction of the mark is maintained and made FINAL.
For more information about changes to the mark in the drawing after the application filing date, as well as instructions on how to submit a drawing, please go to the Drawing webpage.
Color Claim and Mark Description – Final Requirements
However, Applicant failed to address this requirement in the September 18, 2019 response.
A complete color claim must reference all the colors appearing in the drawing of the mark. See 37 C.F.R. §2.52(b)(1); TMEP §§807.07(a) et seq. Similarly, a complete description of a mark depicted in color must specify where the colors appear in the literal and design elements of the mark. See 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §§807.07(a) et seq. If black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark, applicant must so specify in the description. See TMEP §807.07(d).
Accordingly, the requirements for an accurate color claim and mark description are maintained and made FINAL.
The following color claim and description are suggested, if accurate:
Color claim: The colors blue, white, black and gray are claimed as a feature of the mark.
Description: The mark consists of the stylized term “ANGLE” appearing in white on a quadrilateral carrier design of blue and gray. A black and gray triangle also appears adjacent to the right side of the quadrilateral carrier design.
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 final Office action and/or appeal it to the Trademark Trial and Appeal Board (TTAB)
/Nelson B. Snyder III/
Trademark Examining Attorney
Law Office 107
571-272-9284
nelson.snyder@uspto.gov (Informal comms only
RESPONSE GUIDANCE