To: | VEC LIMITED (smulholland@mulholland-law.com) |
Subject: | U.S. Trademark Application Serial No. 88439830 - VAPO - N/A |
Sent: | January 29, 2020 10:33:56 AM |
Sent As: | ecom110@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88439830
Mark: VAPO
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Correspondence Address: |
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Applicant: VEC LIMITED
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Reference/Docket No. N/A
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 29, 2020
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: First-Filed Foreign Application/Registration Requirement
Applicant must respond to all issues raised in this 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).
First-Filed Application/Registration Requirement
Through the submission of a Letter of Protest, it appears that the applicant has a foreign registration from New Zealand with a registration dated of September 23, 2014. The current foreign application is from the United Kingdom with a filing date of February 11, 2019. Applicant’s reliance on the UK foreign application must be explained. See TMEP §1003.01. Specifically, the application relied upon under §44(d) must be the applicant’s first application filed in any treaty country for the same mark and for the same goods or services. If the first-filed application was withdrawn, abandoned, or otherwise disposed of without having any rights outstanding, and did not serve as a basis for claiming a right of priority, the §44(d) priority claim may be based upon a subsequently filed application in the same foreign country or common office of several states. The applicant however, must provide a written explanation that the first-filed application was withdrawn, abandoned, or otherwise disposed of without having any rights outstanding, and did not serve as a basis for claiming a right of priority.
In an application filed solely under Section 44(d), the applicant must be the owner of the foreign application on the filing date of the U.S. application. TMEP §1005; see In re De Luxe, N.V., 990 F.2d 607, 609, 26 USPQ2d 1475, 1477 (Fed. Cir. 1993); In re Tong Yang Cement Corp., 19 USPQ2d 1689, 1690-91 (TTAB 1991). Accordingly, applicant must establish ownership of the foreign application on the date of filing in the United States to retain the priority filing date. TMEP §1005; see 37 C.F.R. §2.61(b).
If applicant can prove the foreign application was assigned to applicant on or before the filing date of the U.S. application, the Section 44(d) basis can remain in the application. See TMEP §1005. Applicant may establish ownership of the foreign application by submitting (1) a copy of an assignment document, (2) certification from the foreign trademark office that reflects applicant’s ownership of the foreign application and the date of the assignment, or (3) a printout from the intellectual property’s office website that shows the foreign application was assigned to applicant on or before the filing date of the U.S. application. See TMEP §§1005, 1006.
If applicant did not own the foreign application on or before the filing date of the U.S. application, applicant will not be entitled to the Section 44(d) priority filing date and the priority claim will be deleted. TMEP §1005. In that case, because applicant has not claimed another filing basis, applicant would have to amend to an acceptable basis, if applicant can satisfy the requirements for the new basis. See 15 U.S.C. §§1051(a)-(b), 1126(e); TMEP §§806.03, 1002.02, 1005.
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
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.
/Giancarlo Castro/
Giancarlo Castro
Trademark Examining Attorney
Law Office 110
giancarlo.castro@uspto.gov
571-272-9357
RESPONSE GUIDANCE