| To: | YOKE INDUSTRIAL CORP. (simone@mg-ip.com) |
| Subject: | U.S. Trademark Application Serial No. 88455163 - RI - N/A |
| Sent: | August 22, 2019 10:29:24 AM |
| Sent As: | ecom128@uspto.gov |
| Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 88455163
Mark: RI
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Correspondence Address: MUNCY, GEISSLER, OLDS & LOWE, P.C.
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Applicant: YOKE INDUSTRIAL CORP.
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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). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: August 22, 2019
SUMMARY OF ISSUES
· Partial Section 2(d) Refusal – Likelihood of Confusion – Class 9
· Mark Description and Color Claim – Required
· Identification and Classification of Goods – Required
· Multiple Class Application Requirements
· Section 1(b) and Section 44(d) With Intent to Perfect – Requirements
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
PLEASE NOTE: The following refusal pertains only to applicant’s goods in International Class 9. Applicant’s goods in International Class 6 are not subject to this refusal.
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 5467474. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
The applicant’s mark is RI (with design) for goods including “Computer software, recorded; cell phone application; mobile phone application; computer programs, downloadable; applications programs, downloadable; data processing equipment, namely, scanners; computer software applications, downloadable; applications programs, downloadable; computer software, downloadable; internet device; electronic publications, downloadable; stylus; bar code readers; network server; data processing equipment, namely, couplers; computer hardware; touch panel; read-only memory chips; computer software platforms, recorded or downloadable; data retrieving machine” in International Class 9.
The registrant’s mark is RI WIRELESS (with design) for goods including “Measuring, detecting, signaling and monitoring instruments, indicators and controllers, namely, electronic devices in the nature of temperature, pressure and flow gauges; electric and electronically controlled valves for controlling gas or fluids; electric control and regulating valves for monitoring the flow and pressure of fluid and gas; solenoid valves; automatically actuated valves; control valves for monitoring the flow and pressure of fluid and gas; remote control apparatus for effecting the automatic opening and closure of valves and actuators; gauges, namely, pressure, level and vacuum gauges; sensors and detectors, namely, pressure sensors, electric sensors, optical sensors, flow sensors; monitoring sensors for data and statistical information in the field of temperature, pressure and flow of liquid or gas; modulating sensors for monitoring fluid and gas; electric switches, binary switches for controlling pressure, delta pressure, temperature, humidity, gases, mists, vapor and dust; electric switch boxes; electronic regulators for monitoring and controlling gas pressure and fluid flow; safety and releasable electric locking devices; electric relays; pneumatic relays; electrical transducers; parts of the mentioned above appliances, devices and instruments; Electric data processing equipment, in particular apparatus for the input, transmission, storage and output of data; Data processing programs and software; integrated circuits and semiconductors; junction sleeves for electric cable; holders for electric coils; choking coils for use in electrical apparatus; electrical sockets; electric plugs; electric switches; electric control panels; electromagnetic coils; connections for electric lines; wireless system for monitoring the position of valves in an industrial network, namely, apparatus for the remote control and monitoring of valve position; wireless system for monitoring the health of valves in an industrial network, namely, apparatus for the remote control and monitoring of valve health; wireless system for the remote control of valves and actuators comprised of apparatus for the remote control of valves and actuators; wireless system for monitoring the flow or liquid or gas in an industrial network, namely, flow rate gauges and sensors, flow rate and pressure monitors, liquid rate and pressure monitors, gas rate and pressure monitors; wireless devices for data retention and analysis, namely, for the performance of components in an industrial network in the nature of sensors, gauges, switches, relays, transformers, alarms; wireless devices for monitoring the failure of valves and actuators, namely, sensors, gauges, switches, relays, transformers, alarms; wireless network alarm systems, namely, sensors, gauges and alarms for alerting mechanical failures in industrial processes; wireless detectors for identifying failures in mechanical industrial processes; wireless sensors for identifying failures in mechanical industrial processes; wireless systems for the communication of data to a remote data terminal, namely, sensors, gauges, switches, relays, transformers, alarms; wireless transmitters; wireless receivers; wireless communication apparatus, namely, alarm systems” in International Class 9.
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 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. 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.
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 this case, applicant’s mark is RI and registrant’s mark is RI WIRELESS. As shown, applicant’s and registrant’s marks all contain the identical first term “RI”. The only difference between the literary elements of the marks is that registrant has added the term WIRELESS. 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”). Therefore, the dominant portions of both marks is RI.
Additionally, registrant’s additional wording “WIRELESS” is disclaimed. Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii). Disclaimed matter that is descriptive of or generic for a party’s goods is typically less significant or less dominant when comparing marks. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).
The examining attorney notes that both of registrant’s marks contain design elements. However, this does not significantly affect the likelihood of confusion analysis. When evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii). Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed. In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)). Furthermore, the design elements in both marks are highly visually similar.
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).
Therefore, the marks are considered similar for likelihood of confusion purposes.
Similarity of the Goods
In this case, the application use(s) broad wording to describe “computer software, recorded; cell phone application; mobile phone application; computer programs, downloadable; applications programs, downloadable; computer software applications, downloadable; applications programs, downloadable; computer software, downloadable; internet device; network server; computer hardware; read-only memory chips; computer software platforms, recorded or downloadable; data retrieving machine” which presumably encompasses all goods of the type described, including registrant(s)’s more narrow “Measuring, detecting, signaling and monitoring instruments, indicators and controllers, namely, electronic devices in the nature of temperature, pressure and flow gauges; electric relays; electrical transducers; data processing programs and software; integrated circuits and semiconductors; junction sleeves for electric cable; wireless systems for the communication of data to a remote data terminal, namely, sensors, gauges, switches, relays, transformers, alarms; wireless network alarm systems, namely, sensors, gauges, switches, relays, transformers, alarms”. Further, the registration use(s) broad wording to describe “sensors and detectors, namely, pressure sensors, electric sensors, optical sensors, flow sensors; monitoring sensors for data and statistical information in the field of temperature, pressure and flow of liquid or gas; modulating sensors for monitoring fluid and gas; electric data processing equipment, in particular apparatus for the input, transmission, storage and output of data” which presumably encompasses all goods of the type described including applicant’s more narrow “data processing equipment, namely, scanners; stylus; bar code readers; data processing equipment, namely, couplers; touch panel” 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 goods 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 goods 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)). Thus, applicant’s and registrant’s goods are related.
Considering all of the above, applicant’s mark is refused registration under Trademark Act Section 2(d).
MARK DESCRIPTION AND COLOR CLAIM – REQUIRED
To clarify how white is being used in the mark, applicant may satisfy one of the following:
(1) If white is a feature of the mark, applicant must amend the color claim to include white and amend the description to identify where white appears in the literal and/or design elements of the mark. The following color claim and description are suggested, if accurate:
Color claim: “The colors blue, red, black, and white is/are claimed as a feature of the mark.”
Description: “The mark consists of the following: the wording “RI” in stylized font, where the “R” appears in blue and the “I” appears in red with a design of three curved stacked lines increasing in length above it; the wording “RI” appears inside a cloud outlined in black; the inside of the cloud is white.”
(2) If white is not a feature of the mark, applicant must amend the description to state that white represents background, outlining, shading and/or transparent areas and are not part of the mark. The following description is suggested, if accurate:
“The mark consists of the following: the wording “RI” in stylized font, where the “R” appears in blue and the “I” appears in red with a design of three curved stacked lines increasing in length above it; the wording “RI” appears inside a cloud outlined in black; the color white represents background only and is not claimed as a feature of the mark.”
TMEP §807.07(d).
Applicant should note the following additional requirement outlined below.
IDENTIFICATION AND CLASSIFICATION OF GOODS – REQUIRED
Applicant must clarify some of the wording in the identification of goods because it is indefinite. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. This wording is indefinite because it does not make clear the exact nature of the goods. Applicant must amend the identification to specify the common commercial or generic name of the goods. See TMEP §1402.01. If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses. See id.
The USPTO requires such specificity in order for a trademark examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks. See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1402.03(d). See suggested amended wording below.
If modifying one of the duplicate entries, applicant may amend it to clarify or limit the goods, but not to broaden or expand the goods beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Also, generally, any deleted goods may not later be reinserted. TMEP §1402.07(e). See suggested amended wording below.
Additionally, the identification for “electronic publications, downloadable in International Class 9 is indefinite and must be clarified because the wording does not make clear the nature of the publications. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03, 1402.11(a)(x). Applicant must specify (1) the common name of the type of publications, such as brochures, newsletters, or magazines; and (2) the subject matter of the publications. See TMEP §1402.03(e). If the subject matter is not a significant aspect of the publications, the identification may specify the general character or type of the publications (e.g., downloadable electronic publications in the nature of general feature magazines are acceptable in International Class 9). Id. See suggested amended wording below.
Applicant should note that any wording in bold, in italics, underlined and/or in ALL CAPS below offers guidance and/or shows
the changes being proposed for the identification of goods. If there is wording in the applicant’s version of the identification of goods which should be removed, it
will be shown with a line through it such as this: strikethrough. When making its amendments, applicant should
enter them in standard font, not in bold, in italics, underlined or in ALL CAPS.
Applicant may substitute the following wording, if accurate:
Class 6: Metal chains, namely, iron chain; metal hooks; split rings of common metal for keys; hanger hooks, namely, _____ {indicate specific goods, e.g., hooks of metal for clothes rails, hat-hanging hooks of metal, towel hooks of metal}; hanging metal chain; fasteners for cable ends, namely, _____ {indicate specific goods, e.g., binding screws of metal for cables, cable thimbles of metal, cable clamps of metal}; metal shackles for lifting and rigging; metal anchor shackle for lifting and rigging; metal hoist rings, namely, chain hoist used for lifting and rigging; metal hoist hooks for lifting and rigging; pulleys of metal, other than for machines; metal pulleys, not including machine elements; locksets of metal; wire rope fittings of metal, namely, metal rope buckle; rings of metal, namely, _____ {indicate specific goods, e.g., screw rings of metal, split rings of common metal for keys}; hook rings of metal, namely, _____ {indicate specific goods, e.g., metal gate hooks, metal clothes hooks}; turning rings of metal, namely, _____ {indicate specific goods, e.g., screw rings of metal, split rings of common metal for keys}; metal rope grabs being belay devices, descenders; slings of metal for handling loads; harness of metal for handling loads; metal cable, non-electric, for handling loads; chain hoisting cords of metal used for lifting and rigging; metal polymer ropes; metal lifting hooks; metal flying rings, namely, _____ {indicate specific goods, e.g., screw rings of metal}
Class 9: Computer software, recorded for _____ {indicate specific purpose or use, e.g., for use in database management, for use as a
spreadsheet}; downloadable computer application software for cell phones application, namely, software for _____
{specify the function of the programs, e.g., use in database management, use in electronic storage of data}; downloadable computer application software
for mobile phones application, namely, software for _____ {specify the function of the programs, e.g., use in database management,
use in electronic storage of data}; computer programs, downloadable, for _____ {indicate specific purpose or use, e.g., video and computer games, user
interface design}; computer applications programs, downloadable, for _____ {specify items, e.g., mobile phones, portable media
players, handheld computers}, namely, software for _____ {indicate the function of the programs, e.g., use in database management, use in electronic storage of data};
data processing equipment, namely, _____ {indicate specific type of scanner, e.g., bar code, optical} scanners; computer software applications,
downloadable, for _____ {specify items, e.g., mobile phones, portable media players, handheld computers}, namely, software for _____ {indicate the function of the programs, e.g., use in database management, use in electronic storage of data}; applications programs, downloadable;
computer software, downloadable, for _____ {indicate specific purpose or use, e.g., use as a spreadsheet, word processing, etc. and, if software is content- or
field-specific, the content or field of use}; internet device, namely, _____ {indicate specific goods, e.g., mobile phones, tablet computers};
electronic publications, downloadable, in the nature of _____ {indicate specific nature of publication} in the field of _____ {indicate
subject matter of publication}; stylus, namely, _____ {indicate specific goods, e.g., computer stylus, capacitive styluses for touch screen
devices}; bar code readers; network servers; data processing equipment, namely, couplers; computer hardware; touch panels; read-only memory chips
being computer chips; computer software platforms, recorded or downloadable, for _____ {indicate purpose of the platforms, e.g., application
development, web hosting, database management}; data retrieving machine, namely, communication devices for data transmission
Class 14: rings of metal, namely, split rings of precious metal for keys, key rings of precious metals
Class 20: hanger hooks, namely, hat hooks not of metal, clothes hooks not of metal; hanging chains, namely, non-metal chains
Class 22: fasteners for cable ends, namely, rubber cable ties and straps for fastening and securing objects such as bundles of cable wire together
See TMEP §§1402.01, 1402.03.
For assistance with identifying and classifying goods 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 – ADVISORY
(1) List the goods and/or 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 fee(s) already paid (view the USPTO’s current fee schedule). The application identifies goods that are classified in at least 5 classes; however, applicant submitted a fee(s) sufficient for only 2 class(es). 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 Sections 1(b) and 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
Applicant should note the following additional requirement outlined below.
SECTION 1(b) & SECTION 44(d) WITH INTENT TO PERFECT – REQUIREMENTS
An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin. 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016. In addition, an applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law. 15 U.S.C. §1126(b); TMEP §§1002.01, 1004.
Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available. TMEP §1003.04(a). A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin. TMEP §1004.01. If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin. TMEP §1016. In addition, applicant must also provide an English translation if the foreign registration is not written in English. 37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b). The translation should be signed by the translator. TMEP §1004.01(b).
If the foreign registration has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English translation, as appropriate), applicant should so inform the trademark examining attorney and request that the U.S. application be suspended until a copy of the foreign registration is available. TMEP §§716.02(b), 1003.04(b).
If applicant cannot satisfy the requirements of a Section 44(e) basis, applicant may request that the mark be approved for publication based solely on the Section 1(b) basis. See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.35(b)(1); TMEP §§806.02(f), 806.04(b), 1003.04(b). Although the mark may be approved for publication on the Section 1(b) basis, it will not register until an acceptable allegation of use has been filed. See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103. Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration. See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.04(b).
Alternatively, applicant has the option to amend the application to rely solely on the Section 44(e) basis and request deletion of the Section 1(b) basis. See 37 C.F.R. §2.35(b)(1); TMEP §806.04. The foreign registration alone may serve as the basis for obtaining a U.S. registration. See 37 C.F.R. §2.34(a)(3); TMEP §806.01(d).
RESPONSE GUIDELINES
For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
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
/Megan Aurand/
Megan Aurand
Examining Attorney
Law Office 128
(571) 272-1614
megan.aurand@uspto.gov
RESPONSE GUIDANCE
