Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

FINAL 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) 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:  April 04, 2020

 

This letter is in response to applicant’s communication filed March 01, 2020.  Applicant did not respond to the requirement for an acceptable identification of goods and services.  Therefore, this requirement is maintained and made final.  Applicant did not respond to the drawing requirement.  Therefore, this requirement is maintained and made final.

 

SUMMARY OF ISSUES:

 

• Identification of Goods and/or Services
• Drawing

 

IDENTIFICATION OF GOODS AND/OR SERVICES

 

The wording “cartoon NOSHI figure graphic” in the identification of goods and/or services is indefinite and too broad and must be clarified because the word does not make clear the nature of the goods or services and could identify goods and/or services in more than one international class.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03, 1904.02(c), (c)(ii).

 

An applicant should not use its own registered or unregistered mark or entity name in an identification of goods and/or services.  See TMEP §1402.09.  Identifications of goods and/or services should generally be comprised of generic everyday wording for the goods and/or services, and exclude proprietary or potentially-proprietary wording.  See TMEP §§1402.01, 1402.09.

 

The applicant is strongly urged to consult the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual for assistance with identifying and classifying goods and services in this trademark application. See TMEP §1402.04

 

The following substitute wording is suggested, if accurate: 

 

International Class 009

 

Downloadable cartoon strips

 

International Class 016

 

Printed cartoon strips

 

International Class 041

 

Providing online non-downloadable cartoon strips

 

International Class 042

 

Graphic art design in the field of cartoons

 

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.

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

This requirement is maintained and made final.

 

DRAWING

 

Applicant submitted a drawing of the mark in black and white with a claim of the colors black and white as a feature of the mark and a description that does not include color.  This has created an ambiguity as to whether color is being claimed as a feature of the mark.  See 37 C.F.R. §2.52(b)-(b)(1); TMEP §807.07(f)(ii).  There are only two options for depicting a mark in a trademark application:  (1) a color drawing in which color is a feature of the mark, or (2) a black-and-white drawing in which color is not a feature of the mark.  See 37 C.F.R. §2.52(b)-(b)(1).

 

To clarify whether color is a feature of the mark, applicant may satisfy one of the following:

 

(1)       If the mark is not in color, applicant must submit the following statement:  “The mark is not in color.”  The current mark description would be acceptable in this case since it does not reference color.  See TMEP §807.07(f)(ii.

 

(2)       If color is a feature of the mark, applicant must submit (a) a statement listing all the colors claimed as a feature of the mark and (b) an amended description of the literal and design elements in the mark that specifies where all the colors appear in those elements.  See 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §807.07(a)-(a)(ii).  If some of the black, white, and/or gray appearing in the mark represent background, outlining, shading, and/or transparent areas, applicant must so specify in the description of the mark.  See TMEP §807.07(d). 

 

The following color claim and description are suggested, if accurate: 

 

Color claim:  “The colors [specify, e.g. black and/or white] are claimed as a feature of the mark.”

 

Description:  “The mark consists of the following:  a [specify color] [specify literal or design element on which the color appears, and continue to similarly list each element and the associated colors for each element in the mark, e.g., a gray and black bird on a white mountain with a black border.”]

 

See TMEP §807.07(b).

 

This requirement is maintained and made final.

 

How to respond.  Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).

 

 

/Evelyn Bradley/

Evelyn Bradley

Trademark Examiner

Law Office 104

(571) 272-9292

 

 

 

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 April 04, 2020 for

U.S. Trademark Application Serial No. 88448725

 

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. 

 

 

.

/Evelyn Bradley/

Evelyn Bradley

Trademark Examiner

Law Office 104

(571) 272-9292

 

 

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 April 04, 2020, 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.”