UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.  A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.

 

 

ISSUE/MAILING DATE: 6/12/2019

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issues below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

SUMMARY OF ISSUES THAT APPLICANT MUST ADDRESS

 

• Trademark Act Section 2(d) refusal

 

• Prior filed application references

 

• Identification and classification of goods and services requirements

 

• Multiple class application requirements

 

TRADEMARK ACT SECTION 2(d) REFUSAL

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 2347555, 3225620,  4027563, 4027564, 4261302, 4482219, 4489447, 4591956, and 4974098.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and services of the parties.  See 15 U.S.C. §1052(d).  Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”).  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017).  Only those factors that are “relevant and of record” need be considered.  M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018). 

 

Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis:  (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services.  See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.

 

The applicant in this case seeks registration of DIAMOND, in standard characters, for use with downloadable software and mobile applications for streaming audiovisual and multimedia content, sporting events, tournaments, television programming, for playing fantasy sports games based on player statistics and rankings, and for information, news, and commentary in the field of sports gambling and betting, via the internet and global communications networks; downloadable software and mobile applications for streaming audiovisual and multimedia content, sporting events, tournaments, television programming, for playing fantasy sports games based on player statistics and rankings, and for information, news, and commentary in the field of sports gambling and betting, to mobile digital electronic devices, mobile phones, smartphones, portable media players, and handheld computers; broadcasting, and audio, video and data transmission and delivery services rendered through the media of television, cable, satellite, radio, telephone and broadband systems, and via the internet; broadcasting services, namely, the electronic and interactive transmission of streaming digital audio, voice, data, images, signals, video, graphics, multimedia and text through the media of television, cable, satellite and via the internet; video on demand transmission services; entertainment and educational services, namely, providing non-downloadable multimedia content in the fields of entertainment, news, sports, tournaments, playing fantasy sports games based on player statistics and rankings, and sports gambling and betting, via a video-on-demand service; entertainment services, namely, providing non-downloadable television programming, news, sports, tournaments, information on playing fantasy sports games based on player statistics and rankings, and information for sports gambling and betting, via a video-on-demand service; providing a website and platform on handheld computers featuring non-downloadable multimedia content in the fields of entertainment, news, sports, tournaments, playing fantasy sports games based on player statistics and rankings, and sports gambling and betting; providing a website and platform on handheld computers featuring non-downloadable television programming, entertainment, news, sports, tournaments, information for playing fantasy sports games based on player statistics and rankings, and information for sports gambling and betting; production and distribution of television, cable, satellite, radio, internet-based television sports programs; television program syndication; computer services, namely, providing an interactive website featuring technology that allows users to access a database of shows, sporting events, tournaments, news and other related information; providing website featuring a search engine for shows and episodes of entertainment series, sporting events, tournaments and television programming; creating indexes of online information for others via a global computer network and via mobile communications devices.

 

The registrant’s marks are DIAMONDNET, in standard characters, [U.S. Registration No. 3225620] for cable television transmission services; DIAMOND WIRELESS, in standard characters, [U.S. Registration No. 4591956] for satellite television transmission; DIAMOND WIRELESS and a design of a diamond [U.S. Registration No. 4489447] for satellite television transmission; DIAMOND LEAGUE, in standard characters, [U.S. Registration No. 4027564] for telecommunications, namely, transmission of database information via telecommunications networks; providing of training services in the fields of athletics and sports; entertainment in the nature of audio and visual performances, sporting and cultural activities, namely, organizing athletic competitions featuring track and field events and organizing exhibitions for sporting and cultural purposes; DIAMOND LEAGUE and design [U.S. Registration No. 4027563] for telecommunications, namely, transmission of database information via telecommunications networks; providing of training services in the fields of athletics and sports; entertainment in the nature of audio and visual performances, sporting and cultural activities, namely, organizing athletic competitions featuring track and field events and organizing exhibitions for sporting and cultural purposes; DIAMONDDOX, in standard characters, [U.S. Registration No. 4974098] for electronic storage of data, documents, files, information, text, images, photographs, graphics, audio and video content via computing devices connected across computer and communications networks; design and development of electronic data security systems to protect data, documents, files, information, text, images, photographs, graphics, audio and video content via computing devices connected across computer and communications networks; providing a web site featuring technology that enables internet users to store and share data, documents, files, information, text, images, photographs, graphics, audio and video content via computing devices connected across computer and communications networks; providing on-line non-downloadable computer software used to secure, protect, store and optionally share with others, data, documents, files, information, text, images, photographs, graphics, audio and video content via computing devices connected across computer and communications networks; DIAMOND CHALLENGE, in typed form, [U.S. Registration No. 2347555] for entertainment services in the nature of a fantasy sports game where individuals select and manage a sports team for prizes; and DIAMONDNET, in standard characters, [U.S. Registration No. 4261302] for providing Internet access.

 

Comparing the marks:

 

Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression.  Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v).  “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.”  In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)); TMEP §1207.01(b).

 

When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.”  Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b).  The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks.  In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (CCPA 1971)); TMEP §1207.01(b).

 

Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression.  See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii). In this case, the proposed mark is confusingly similar to the word DIAMOND in each of the registrants’ marks.

 

Notably, it is also the word DIAMOND that is the first word in each mark. Consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark.  See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (finding similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876, 23 USPQ2d 1698, 1700 (Fed Cir. 1992) (finding similarity between CENTURY 21 and CENTURY LIFE OF AMERICA in part because “consumers must first notice th[e] identical lead word”); see also In re Detroit Athletic Co., 903 F.3d 1297, 1303, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”). Accordingly, the proposed mark is confusingly similar to each registered mark.

 

Comparison of the goods and services:

 

The compared goods and services need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i).  They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and services] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).

 

Where the applicant's or registrant's goods are worded broadly, it is presumed that the goods encompass all goods of the type described, including those in the other party's more narrowly worded goods.  See, e.g., Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015); In re N.A.D., Inc., 57 USPQ2d 1872, 1874 (TTAB 2000).  Additionally, where the goods of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers, they are "presumed to travel in the same channels of trade to the same class of purchasers."  In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). 

 

Here, the applicant’s goods and services are closely related, or even identical, to goods and services offered under each registration. For example, the applicant’s mark is intended for use with television and internet data transmission and delivery services and the marks in U.S. Registration Nos. 3225620, 4591956, 4489447, 4027564, 4261302 and 4027563 are all used with the same or highly related services. Both the applicant and registrant in U.S. Registration No. 4974098 have websites featuring technology allowing users to retrieve content. The applicant offers fantasy sports goods and services and the marks in U.S. Registration No. 2347555 is used with a fantasy sports game. Accordingly, the goods and services of the parties are closely related.

 

Consumers encountering the proposed mark used simultaneously with the cited marks for closely related or even identical goods and services are likely to mistakenly believe that the goods and services are related and originate from a common source. Accordingly, for the foregoing reasons, registration must be refused under Section 2(d) of the Trademark Act.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

 

PRIOR FILED APPLICATIONS

 

The trademark examining attorney has searched the USPTO’s database of registered and pending The filing dates of pending U.S. Application Serial Nos. 87857945 and 88383490 precede applicant’s filing date.  See attached referenced applications.  If one or more of the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s).  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced applications.

 

In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the marks in the referenced applications.  Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.

 

IDENTIFICATION OF GOODS AND SERVICES – CLARIFICATION REQUIRED

 

The identification of goods and services is indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. In addition, some of the goods and services may have been misclassified. The applicant must amend the application to properly classify the goods and services and either limit the application to goods and services falling in four classes or add classes to the application. See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq.  If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.

 

The following specific issues must be resolved:

 

International Class 9:

 

The wording “mobile applications” in the language “downloadable software and mobile applications for streaming audiovisual and multimedia content, sporting events, tournaments, television programming, for playing fantasy sports games based on player statistics and rankings, and for information, news, and commentary in the field of sports gambling and betting, via the internet and global communications networks; is indefinite. The applicant must specify whether the goods are “downloadable” or “recorded” (in which instance the goods would remain in International Class 9) or “online, non-downloadable” format, in which instance the proper class would be International Classes 42. Note, however, that if the “fantasy sports games” are actual computer games, then their online version would be classified in International Class 41. In addition, the applicant must specify what the software and applications actually do in relation to the wording “information, news, and commentary in the field of sports gambling and betting.”

 

The wording “mobile applications” in the language “downloadable software and mobile applications for streaming audiovisual and multimedia content, sporting events, tournaments, television programming, for playing fantasy sports games based on player statistics and rankings, and for information, news, and commentary in the field of sports gambling and betting, to mobile digital electronic devices, mobile phones, smartphones, portable media players, and handheld computers” is indefinite. The applicant must specify whether the goods are “downloadable” or “recorded” (in which instance the goods would remain in International Class 9) or “online, non-downloadable” format, in which instance the proper class would be International Classes 42. Note, however, that if the “fantasy sports games” are actual computer games, then their online version would be classified in International Class 41. In addition, the applicant must specify what the software and applications actually do in relation to the wording “information, news, and commentary in the field of sports gambling and betting.”

 

International Class 38:

 

The wording “broadcasting, and audio, video and data transmission and delivery services rendered through the media of television, cable, satellite, radio, telephone and broadband systems, and via the internet” is indefinite. The applicant must clarify the nature of the material provided via the “broadcasting” and “delivery” services.

 

The wording “broadcasting services, namely, the electronic and interactive transmission of streaming digital audio, voice, data, images, signals, video, graphics, multimedia and text through the media of television, cable, satellite and via the internet; video on demand transmission services” is indefinite. The applicant must clarify the form of the services.

 

International Class 41:

 

The wording “entertainment and educational services, namely, providing non-downloadable multimedia content in the fields of entertainment, news, sports, tournaments, playing fantasy sports games based on player statistics and rankings, and sports gambling and betting, via a video-on-demand service” is indefinite. The applicant must specify the form of the content. In addition, the applicant must specify the subject matter of the ‘news” and “tournaments”.

 

The wording “entertainment services, namely, providing non-downloadable television programming, news, sports, tournaments, information on playing fantasy sports games based on player statistics and rankings, and information for sports gambling and betting, via a video-on-demand service” is indefinite. The applicant must clarify whether the “television programming” refers to actual television programs or is purely a scheduling service. In addition, the applicant must specify the subject matter of the television services (if the programming in fact refers to programs, rather than scheduling), and the “news” and “tournaments”. Note that the “news” will be classified by the subject matter of the “news” and may be classified in a class other than International Class 41. For example, “providing non-downloadable inspirational and motivational news stories about women” would be classified in International Class 45.

 

The wording “providing a website and platform on handheld computers featuring non-downloadable multimedia content in the fields of entertainment, news, sports, tournaments, playing fantasy sports games based on player statistics and rankings, and sports gambling and betting” is indefinite. The applicant must clarify the form of the “platform” services and nature of the “content”. In addition, the applicant must specify the subject matter of the “news” and “tournaments”. Note that webhosting platforms and platform as a service services are both classified in International Class 42.

 

The wording “providing a website and platform on handheld computers featuring non-downloadable television programming, entertainment, news, sports, tournaments, information for playing fantasy sports games based on player statistics and rankings, and information for sports gambling and betting” is indefinite. The applicant must  clarify the form of the “platform” services. Note that webhosting platforms and platform as a service services are both classified in International Class 42. The applicant must also clarify the nature of the “news” and tournaments”. Note that the “news” will be classified by the subject matter of the “news” and may be classified in a class other than International Class 41. For example, “providing non-downloadable inspirational and motivational news stories about women” would be classified in International Class 45. Finally, regarding the term “programming” the applicant must clarify whether the “television programming” refers to actual television programs or is purely a scheduling service.

 

The wording “production and distribution of television, cable, satellite, radio, internet-based television sports programs” is indefinite. The applicant must clarify the subject matter of the services.

 

International Class 42:

 

The wording “creating indexes of online information for others via a global computer network and via mobile communications devices” is indefinite. The applicant must clarify the media on which the indexes are provided.

 

Applicant may adopt the following identification, if accurate: 

 

“downloadable software and recorded mobile applications for use in streaming audiovisual and multimedia content, sporting events, tournaments, television programming, for use in playing fantasy sports games based on player statistics and rankings, and for use in accessing information, news, and commentary in the field of sports gambling and betting, via the internet and global communications networks; downloadable software and recorded mobile applications for use in streaming audiovisual and multimedia content, sporting events, tournaments, television programming, for use in playing fantasy sports games based on player statistics and rankings, and for use in accessing information, news, and commentary in the field of sports gambling and betting, via mobile digital electronic devices, mobile phones, smartphones, portable media players, and handheld computers,” in International Class 9;

 

“broadcasting, delivery and transmission of audio and video programs in the field of sports entertainment rendered through the media of television, cable, satellite, radio, telephone and broadband systems, and via the internet; broadcasting services, namely, the electronic and interactive streaming transmission of digital media in the form of audio, voice, data, images, video, graphics, multimedia and text through the media of television, cable, satellite and via the internet; video on demand transmission services,” in International Class 38;

 

“entertainment and educational services, namely, providing non-downloadable multimedia videos in the fields of entertainment, sports news, sports, sports tournaments, playing fantasy sports games based on player statistics and rankings, and sports gambling and betting, via a video-on-demand service; entertainment services, namely, providing non-downloadable television programs in the field of sports, sports news, sports, sports tournaments, information on playing fantasy sports games based on player statistics and rankings, and information for sports gambling and betting, via a video-on-demand service; providing a website for handheld computers featuring non-downloadable multimedia videos in the fields of entertainment, sports news, sports, sports tournaments, playing fantasy sports games based on player statistics and rankings, and sports gambling and betting; providing a website for handheld computers featuring non-downloadable television programs in the field of sports, entertainment, sports news, sports, sports tournaments, information for playing fantasy sports games based on player statistics and rankings, and information for sports gambling and betting; production and distribution of television, cable television, satellite television and radio, radio, and internet-based television sports programs; television program syndication,” in International Class 41;

 

“computer services, namely, providing an interactive website featuring technology that allows users to access a database of shows, sporting events, tournaments, news and other related information; providing website featuring a search engine for shows and episodes of entertainment series, sporting events, tournaments and television programming; creating website based indexes of online information for others for access via a global computer network and via mobile communications devices,” International Class 42.

 

Additions Not Allowed: Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See TMEP §1402.07(e).

 

Trademark ID Manual: For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

 

MULTIPLE CLASS APPLICATION REQUIREMENTS

 

The application identifies goods and services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(1)       List the goods and services by their international class number in consecutive numerical order, starting with the lowest numbered class.

 

(2)       Submit a filing fee for each international class not covered by the fees already paid (view the USPTO’s current fee schedule).  The application identifies goods and services that may be classified in five or more classes; however, applicant submitted fees sufficient for only four classes.  Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

QUESTIONS REGARDING THE INSTANT OFFICE ACTION

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

If applicant has technical questions about the TEAS response to Office action form, applicant can review the electronic filing tips available online at http://www.gov.uspto.report/trademarks/teas/e_filing_tips.jsp and e-mail technical questions to TEAS@uspto.gov.

 

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.  

 

REPRESENTATION RULES CHANGES - ADVISORY

 

In spring 2019, the USPTO is likely to issue proposed changes to the federal trademark regulations to require trademark applicants, registrants, and parties to Trademark Trial and Appeal Board proceedings who are foreign-domiciled (have a permanent legal residence or a principal place of business outside of the United States), including Canadian filers, to have an attorney who is licensed to practice law in the United States represent them at the USPTO.

 

In addition, U.S.-licensed attorneys representing a trademark applicant, registrant, or party will generally be required to provide their bar membership information, a statement attesting to their good standing in that bar, and their postal/email addresses in trademark-related submissions.  All U.S.-licensed attorneys who practice before the USPTO are subject to the rules in 37 C.F.R. Part 11 governing representation of others, including the USPTO’s Rules of Professional Conduct.  

 

These changes are being made to increase customer compliance with federal trademark law, improve the accuracy of trademark submissions to the USPTO, and safeguard the integrity of the U.S. trademark register.  See the U.S. Counsel Rule change webpage for more information.

 

 

 

/Martha L. Fromm/

Trademark Examining Attorney

U.S. Patent and Trademark Office - Law Office 106

571-272-9320

Martha.Fromm@USPTO.gov

 

TO RESPOND TO THIS LETTER:  Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application.  For technical assistance with online forms, e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned trademark examining attorney.  E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

 

All informal e-mail communications relevant to this application will be placed in the official application record.

 

WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants).  If an applicant is represented by an attorney, the attorney must sign the response. 

 

PERIODICALLY CHECK THE STATUS OF THE APPLICATION:  To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/.  Please keep a copy of the TSDR status screen.  If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199.  For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

 

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 6/12/2019 FOR U.S. APPLICATION SERIAL NO. 88438570

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 6/12/2019 (or sooner if specified in the Office action).  A response transmitted through the Trademark Electronic Application System (TEAS) must be received before midnight Eastern Time of the last day of the response period.  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the TEAS response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.