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:  August 28, 2019

 

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

 

SUMMARY OF ISSUES:

 

• Section 2(d) Refusal – Likelihood Of Confusion
• Section 2(e)(1)Refusal – Primarily Merely a Surname
• Amendment to Identification of Services Required
• Acceptable Specimen Required

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

 

THIS PARTIAL REFUSAL APPLIES TO CLASSES 35 and 42 ONLY

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 5283708.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registration.

 

The applicant has applied to register “CONTINO” for, in relevant part:

 

In Class 35:

consulting and advisory services in the field of business technology strategy; consulting and advisory services in the field of business technology strategy, namely, consulting, advising, and/or strategically planning alignments of business processes and strategies with technology solutions; consulting services in the field of design, selection, implementation and use of computer hardware and software systems for others; promoting the use of the security assurance best practices of others in the field of cloud computing; business management consulting with relation to strategy, marketing, sales, operation, product design particularly specializing in the use of analytic and statistic models for the understanding and predicting of consumers, businesses, and market trends and actions; business analysis and business strategic planning services in the technology industry; business consulting services relating to the integration of the areas of business process technology, organizational learning, change management, and operational sustainability

 

In Class 42:

consulting services in the field of cloud computing; consulting services in the field of design, selection, implementation and use of computer hardware and software systems for others; consulting services in the field of design, selection, implementation and use of computer hardware and software systems for others, namely, computer software analysis, technical data analysis and data coding; design and development of cloud computing; design and development of computer software; consulting in the field of configuration management for computer hardware and software; consultation about the maintenance and updating of computer software; technical consulting services in the fields of datacenter architecture, public and private cloud computing solutions, and evaluation and implementation of internet technology and services; development of customized software for others for use in risk assessment, information security, business analysis, audit and audit planning, and sales management.

 

U.S. Registration No. 5283708 is KONTENA for, in relevant part, “software consulting services relating to the deployment, management, scaling and monitoring of containerized applications on cloud infrastructure; Software development, programming and implementation relating to the deployment, management, scaling and monitoring of containerized applications on cloud infrastructure; Hosting services, namely server hosting and hosting of websites; Rental of software; Consulting services in the field of design, selection, implementation and use of computer hardware and software systems for others; Design and development of computer software for deploying, managing, scaling and monitoring containerized applications on cloud infrastructure; Consulting services in the field of software as a service (SAAS) relating to the deployment, management, scaling and monitoring of containerized applications on cloud infrastructure; Technical support services, namely, troubleshooting of computer software problems.

 

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 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 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 services and differences in the marks.”); TMEP §1207.01.

 

 Similarity of 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).

 

In the present case, the registered mark “KONTENA” and the applied-for mark “CONTINO” are confusingly similar because the marks are essentially phonetic equivalents. In particular, the marks are likely to be pronounced “kon tē’na/o” with the only difference in sound being the final vowel in the mark and thus sound similar (see attached evidence from the American Heritage Dictionary and Dictionary.com). Similarity in sound alone may be sufficient to support a finding that the marks are confusingly similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b)(iv).”

 

 

Thus, when calling for the various services identified in the marks, a consumer would be confused as to the source of the services by the use of similar sounding terms.  Therefore, the marks are confusingly similar.

 

Relatedness of the Services

 

The compared 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 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).

 

Here, applicant’s technology and business consulting services are closely related to registrant’s software consulting services. Determining likelihood of confusion is based on the description of the services stated in the application and registration at issue, not on extrinsic evidence of actual use. See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325,123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).

 

In this case, the application uses broad wording, “consulting, design and development, implementation, maintenance and technical consulting,”  to describe software consulting services, which presumably encompasses all services of the type described, including registrant’s software consulting, development, design services.  See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). Thus, applicant’s and registrant’s services are legally identical. See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).

 

Additionally, the services of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and 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)).

 

Applicant’s “consulting and advisory services in the field of business technology strategy; consulting and advisory services in the field of business technology strategy, namely, consulting, advising, and/or strategically planning alignments of business processes and strategies with technology solutions; consulting services in the field of design, selection, implementation and use of computer hardware and software systems for others; promoting the use of the security assurance best practices of others in the field of cloud computing; business management consulting with relation to strategy, marketing, sales, operation, product design particularly specializing in the use of analytic and statistic models for the understanding and predicting of consumers, businesses, and market trends and actions; business analysis and business strategic planning services in the technology industry; business consulting services relating to the integration of the areas of business process technology, organizational learning, change management, and operational sustainability” are related to registrants software consulting service because the services are the type that commonly emanate from the same source.

 

The attached Internet evidence from Brave River Solutions, Centric Consulting, CGI, and SWK Technologies establish that the same entity commonly provides a variety of computer consulting services and business consulting services.  These services are provided through the same trade channels and used by the same classes of consumers in the same fields of use.  Thus, applicant’s and registrants services are considered related for likelihood of confusion purposes.  See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).

 

Thus, when confronted by applicant’s and registrant’s services, consumers would likely be confused as to the source of the service because they are similar consulting services.  Therefore, the services are closely related.

 

Since the marks are confusingly similar and the services are closely related, there is a likelihood of confusion as to the source of applicant’s services.  Therefore, registration is refused pursuant to Section 2(d) of the Trademark Act.

 

 

Response to Section 2(d) – Likelihood of Confusion Refusal

 

Applicant may respond to the stated refusal by submitting evidence and arguments against the refusal.  In addition, applicant may respond by doing one of the following:

 

(1)  Deleting the classes to which the refusal pertains;

 

(2)  Filing a request to divide out the services that have not been refused registration, so that the mark may proceed toward publication for opposition in the classes to which the refusal does not pertain.  See 37 C.F.R. §2.87.  See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide). If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to all outstanding issues in this Office action, including the refusal.  37 C.F.R. §2.87(e).

 

 

SECTION 2(e)(4) REFUSAL – PRIMARILY MERELY A SURNAME

 

Registration is refused because the applied-for mark is primarily merely a surname.  Trademark Act Section 2(e)(4), 15 U.S.C. §1052(e)(4); see TMEP §1211. 

 

An applicant’s mark is primarily merely a surname if the surname, when viewed in connection with the applicant’s recited services, “‘is the primary significance of the mark as a whole to the purchasing public.’”  Earnhardt v. Kerry Earnhardt, Inc., 864 F.3d 1374, 1377, 123 USPQ2d 1411, 1413 (Fed. Cir. 2017) (quoting In re Hutchinson Tech. Inc., 852 F.2d 552, 554, 7 USPQ2d 1490, 1492 (Fed. Cir. 1988)); TMEP §1211.01.

 

The following five inquiries are often used to determine the public’s perception of a term’s primary significance:

 

(1)       Whether the surname is rare;

 

(2)       Whether anyone connected with applicant uses the term as a surname;

 

(3)       Whether the term has any recognized meaning other than as a surname;

 

(4)       Whether the term has the structure and pronunciation of a surname; and

 

(5)       Whether the term is sufficiently stylized to remove its primary significance from that of a surname.

 

In re Eximius Coffee, LLC, 120 USPQ2d 1276, 1278 & n.2, 1282-83 (TTAB 2016) (citing In re Benthin Mgmt. GmbH, 37 USPQ2d 1332, 1333-34 (TTAB 1995) for the Benthin inquiries/factors); TMEP §1211.01; see also In re Etablissements Darty et Fils, 759 F.2d 15, 16-18, 225 USPQ 652, 653 (Fed. Cir. 1985). 

 

These inquiries are not exclusive, and any of these circumstances – singly or in combination – and any other relevant circumstances may be considered when making this determination.  In re Eximius Coffee, LLC, 120 USPQ2d at 1277-78; TMEP §1211.01.  For example, when the applied-for mark is not stylized, it is unnecessary to consider the fifth inquiry.  In re Yeley, 85 USPQ2d 1150, 1151 (TTAB 2007); TMEP §1211.01.

 

Rarity of the Surname

As to the first of the listed inquiries, please see the attached evidence from LexisNexis, establishing the surname significance of “CONTINO”.  This evidence shows the applied-for mark appearing 1,851 times as a surname in the LEXISNEXI® surname database, which is a weekly updated directory of cell phone and other phone numbers (such as voice over IP) from various data providers. Also see attached excerpt from House of Names and Wikipedia establishing that “CONTINO” is a last name.  Accordingly, the surname “CONTINO” is not rare.

 

Use of the Surname by the Applicant

A term appearing on a specimen in a manner that confirms the term’s surname significance is probative evidence on the issue of that term’s primary significance.  See In re Eximius Coffee, LLC, 120 USPQ2d 1276, 1278-79 (TTAB 2016) (holding ALDECOA primarily merely a surname where “Premium Family Coffee” appears directly below the mark on the label specimen, thus “reinforcing its surname significance”); In re Taverniti, SARL, 225 USPQ 1263, 1264 (TTAB 1985) (holding J. TAVERNITI primarily merely a surname where use of that wording on the specimen as an individual’s signature confirmed its surname significance); In re Luis Caballero, S.A., 223 USPQ 355, 356-57 (TTAB 1984) (holding BURDONS primarily merely a surname where use of that term on the specimen in the full name of a fictitious character (“John William Burdon”) confirmed its surname significance); TMEP §1211.02(b)(v).  See generally In re Bose Corp., 546 F.2d 893, 897, 192 USPQ 213, 216 (C.C.P.A. 1976) (“An important function of specimens in a trademark application is, manifestly, to enable the PTO to verify the statements made [or those contradicted] in the application regarding trademark use.”). 

 

The record does not reflect a connection between the applicant and the surname “CONTINO.” Therefore, this factor is neutral.

 

Alternate Meaning of the Surname

Evidence that a term has no recognized meaning or significance other than as a surname is relevant to determining whether the term would be perceived as primarily merely a surname.  See In re Weiss Watch Co., 123 USPQ2d 1200, 1203 (TTAB 2017); In re Eximius Coffee, LLC, 120 USPQ2d 1276, 1280 (TTAB 2016); TMEP §1211.02(b)(vi).  The attached evidence from the Columbia Gazetteer and Merriam Webster’s Dictionary show that the word had no meaning in the English language (see evidence from Merriam-Webster’s Dictionary) nor is it a geographic place (see attached evidence from the Columbia Gazetteer).  The term “CONTINO” does have meaning in Italian, which Collins Dictionary defines as “to count.”  However, while the term has some translation significance it is a conjugation of a verb that is not likely to be translated by the consumer because it appears by itself.  Notwithstanding the minor translation significance, the term “CONTINO” has no other significant meaning to purchasers other than as a surname.

 

 

 

Structure and Pronunciation of the Surname

Evidence that a term has the structure and pronunciation of a surname may contribute to a finding that the primary significance of the term is that of a surname.  In re Eximius Coffee, LLC, 120 USPQ2d 1276, 1280 (TTAB 2016); see In re Giger, 78 USPQ2d 1405, 1409 (TTAB 2006); In re Gregory, 70 USPQ2d 1792, 1796 (TTAB 2004); TMEP §1211.01(a)(vi).

 

Here, the “TINO” portion of the term “CONTINO” is commonly recognized as a suffix of Italian surnames. See attached evidence from Thought.com, and Italy Heritage.com.  Thus the structure of surname CONTINO ending with “TINO” suffix reinforces the commercial impression of “CONTINO” as primarily a surname.

 

Stylization of the Surname

Adding a non-distinctive design element or letter stylization to a term that is primarily merely a surname does not change the surname significance of the term.  The primary significance of such a mark would still be that of a surname.  TMEP §1211.01(b)(ii); see In re Pickett Hotel Co., 229 USPQ 760, 763 (TTAB 1986) (holding PICKETT a surname despite use of stylized lettering); cf. In re Benthin Mgmt. GmbH, 37 USPQ2d 1332, 1333-34 (TTAB 1995). Here, the applicant has applied for mark in standard characters with no design element or stylization. Thus, this factor is neutral.

 

Because CONTINO is a known surname that has the structure and pronunciation of a surname and because the term has no other significant recognized meaning, purchasers will understand the proposed mark as primarily merely a surname. Therefore, registration is refused under Section 2(e)(4) 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.

 

If applicant responds to the refusal, applicant must also respond to the requirements set forth below.

 

AMENDMENT TO IDENTIFICATION OF SERVICES REQUIRED

 

The wording “consulting and advisory services in the field of business technology strategy” and “consulting and advisory services in the field of business technology strategy, namely, consulting, advising, and/or strategically planning alignments of business processes and strategies with technology solutions” is overly broad and indefinite because the type of consulting services is unclear.  See 37 C.F.R. §2.32 (a)(6); TMEP §1402.01. As currently worded, it is unclear whether applicant is providing business consulting services in technology fields (a Class 35 service) or technology consulting services to or related to businesses (a Class 42 service). If applicant is providing business services, applicant should clarify the wording in this clause.  Alternately, if applicant is providing technology services, applicant should separate the identification into a new clause and classify this clause in International Class 42.

 

Applicant has included the term “and/or” or “or” in the identification of services in the following clause, “consulting and advisory services in the field of business technology strategy, namely, consulting, advising, and/or strategically planning alignments of business processes and strategies with technology solutions”. However, this term is generally not accepted in identifications when (1) it is unclear whether applicant is using the mark, or intends to use the mark, on all the identified services; (2) the nature of the services is unclear; or (3) classification cannot be determined from such wording. See TMEP §1402.03(a). In this case, this wording is unacceptable because it is unclear if applicant provides all three consulting, advising and strategic planning services or just some of these services. An application must specify, in an explicit manner, the particular services on or in connection with which the applicant uses, or has a bona fide intention to use, the mark in commerce. See 15 U.S.C. §1051(a)(2), (b)(2); 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Therefore, applicant should replace “and/or” or “or” with “and” in the identification of services, if appropriate, or rewrite the identification with the “and/or” or “or” deleted and the services specified using definite and unambiguous language.

 

The term “consulting services in the field of design, selection, implementation and use of computer hardware and software systems for others” is classified incorrectly.  Inasmuch as applicant has identified these services in International Class 42 already, this wording should be deleted from the Class 35 identification.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b). 

 

The term “design and development of cloud computing” is indefinite because it does not identify what is designed and developed. In particular, cloud computing refers to storing data on servers accessible through the internet. As this refers to a process, the nature of the design and development services is unclear and must be specified.

 

Applicant may adopt the following identification, if accurate:

 

In Class 35

“{applicant to specify consulting services in Class 35, e.g., business, business operations, etc.} consulting and advisory services in the field of business technology strategy; {applicant to specify consulting and advisory services in Class 35, e.g., business, business operations, etc.} consulting and advisory services in the field of business technology strategy, namely, consulting, advising, and strategically planning alignments of business processes and strategies with technology solutions; promoting the use of the security assurance best practices of others in the field of cloud computing; business management consulting with relation to strategy, marketing, sales, operation, product design particularly specializing in the use of analytic and statistic models for the understanding and predicting of consumers, businesses, and market trends and actions; business analysis and business strategic planning services in the technology industry; business consulting services relating to the integration of the areas of business process technology, organizational learning, change management, and operational sustainability,” in Class 35

 

In Class 42

“consulting services in the field of cloud computing; consulting services in the field of design, selection, implementation and use of computer hardware and software systems for others; consulting services in the field of design, selection, implementation and use of computer hardware and software systems for others, namely, computer software analysis, technical data analysis and data coding; design and development of cloud computing, namely, {applicant to clarify the nature of the services, e.g., design and development of cloud-based computer software, etc.}; design and development of computer software; consulting in the field of configuration management for computer hardware and software; consultation about the maintenance and updating of computer software; technical consulting services in the fields of datacenter architecture, public and private cloud computing solutions, and evaluation and implementation of internet technology and services; development of customized software for others for use in risk assessment, information security, business analysis, audit and audit planning, and sales management;” in Class 42

 

In Class 45 (no change)

“regulatory compliance consulting in the field of data security”

 

See TMEP §1402.01.

 

An applicant may amend an identification of services only to clarify or limit the services; adding to or broadening the scope of the services is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07 et seq.

 

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

 

 

ACCEPTABLE SPECIMEN REQUIRED – USE IN COMMERCE

 

Registration is refused because the specimen does not show the applied-for mark in use in commerce in connection with any of the services specified in International Class 35 in the application.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); In re Keep A Breast Found., 123 USPQ2d 1869, 1876-79 (TTAB 2017); In re Graystone Consulting Assocs., Inc., 115 USPQ2d 2035, 2037-38 (TTAB 2015); TMEP §§904, 904.07(a), 1301.04(d), (g)(i).  Specifically, there is no reference in the specimens that show business-related services.  Business consulting must relate to the running or operation of a business as it relates to IT, the specimens show IT services rendered to businesses.

 

An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of services identified in the application.  15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a). 

 

Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and webpages that show the mark used in the actual sale, rendering, or advertising of the services.  See TMEP §1301.04(a), (h)(iv)(C).  Specimens comprising advertising and promotional materials must show a direct association between the mark and the services.  TMEP §1301.04(f)(ii).

 

Applicant may respond to this refusal by satisfying one of the following for each applicable international class:

 

(1)       Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application and (b) shows the mark in actual use in commerce for the services identified in the application.  A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20:  “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application.”  The substitute specimen cannot be accepted without this statement.

 

(2)       Amend the filing basis to intent to use under Section 1(b), for which no specimen is required.  This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.

 

For an overview of both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/specimen.jsp.

 

 

RESPONSE GUIDELINES

 

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.

 

 

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 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  

 

Gallego, Fabiola

/Fabiola Gallego/

Examining Attorney, Law Office 113

United States Patent and Trademark Office

Fabiola.Gallego@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 August 28, 2019 for

U.S. Trademark Application Serial No. 88441284

 

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. 

 

 

Gallego, Fabiola

/Fabiola Gallego/

Examining Attorney, Law Office 113

United States Patent and Trademark Office

Fabiola.Gallego@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 August 28, 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.”