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 31, 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:

• Prior-Pending Applications
• Section 2(d) Refusal – Likelihood of Confusion
• Identification of Goods and Services
• Foreign Registration Required
• Attorney Bar Information and Attestation Required

 

PRIOR-PENDING APPLICATIONS

 

The filing dates of pending U.S. Application Serial Nos. 87832336 and 88218250 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 marks.  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.

 

Applicant must address the following issues:

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 5598246 and 4065839.  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/or 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.

 

COMPARISON 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).

 

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).

 

Here, the registered marks are VAULT (Reg. No. 5598246) in standard character form, and VAULT (Reg. No. 4065839) with design elements.

 

The applied-for mark is VAULT in standard character form.

 

In this case, the word portions of the applied-for and registered marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.”  In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017).  Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods and/or services.  Id.

 

The inclusion of design elements in the registered mark VAULT (Reg. No. 4065839) does not obviate the similarity between the marks.  The applied-for mark is in standard character form, and thus may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition.  See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii).  Thus, a mark presented in stylized characters and/or with a design element generally will not avoid likelihood of confusion with a mark in typed or standard characters because the word portion could be presented in the same manner of display.  See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”). 

 

Furthermore, as discussed above, the word portions of the marks are identical in appearance, sound, connotation, and commercial impression; therefore, the addition of a design element does not obviate the similarity of the marks in this case.  See In re Shell Oil Co., 992 F.2d 1204, 1206, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993); TMEP §1207.01(c)(ii). 

 

The applied-for and registered marks share the identical wording VAULT, which comprises the entirety of the word portion of each of the marks.  As such, the marks are confusingly similar and share the same overall commercial impression.

 

COMPARISON OF THE GOODS AND SERVICES

 

In a likelihood of confusion determination, the goods and/or services are compared to determine whether they are similar, commercially related, or travel in the same trade channels.  See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).

 

The compared goods and/or 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/or 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 goods and services are identified in relevant part as follows:

 

Class 009:  Computer software, namely, downloadable middleware for use within a decentralized computer communications network which allows smart contracts in the nature of software that controls digital contracts to securely, quickly, and auditably connect to external data sources in the nature of data feeds featuring user-defined information, application programming interfaces (APIs) and bank payment infrastructure; Software to execute and record financial transactions by way of a blockchain technology or a distributed ledger, including transactions with the use of smart contracts; Downloadable computer software for encryption; none of the aforesaid goods relating to the misconduct reporting of fraud detection

 

Class 042:  Software as a service (SaaS) services featuring software for providing access to applications and services, namely, providing access to applications and services through a web operating system or portal interface; Computer services, namely, providing temporary use of online non-downloadable middleware for use within a decentralized computer communications network which allows smart contracts in the nature of software that controls digital contracts to securely, quickly, and auditably connect to external data sources in the nature of data feeds featuring user-defined information, application programming interfaces (APIs) and bank payment infrastructure; software as a service (SaaS) services featuring computer software for use within a decentralized computer communications network which allows smart contracts in the nature of software that controls digital contracts to securely, quickly, and auditably connect to external data sources in the nature of data feeds featuring user-defined information, application programming interfaces (APIs) and bank payment infrastructure; Software as a service (SAAS) services featuring software for accounting, bookkeeping, transaction processing, transaction management, tax preparation and planning, business process management, and accounting, and tax planning; and accounting, tax payment filing, business process management, and inventory management, estimating, job costing, employee time tracking, business operations management and project management; Software as a service (SAAS) services featuring software for administering employee payroll; Software as a service (SAAS) services featuring software to import contacts and financial data from other electronic services and software; Software as a service (SAAS) services featuring software for business operation, business administration and office functions of a bank; Providing temporary use of non-downloadable cloud-based software for calculating balance sheets, P and L statements and regulatory reports; Computer systems integration services; none of the aforesaid services relating to the misconduct reporting of fraud detection

 

Determining likelihood of confusion is based on the description of the goods and/or 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)).  

 

I.                Comparison of the Goods and Services with VAULT (Reg. No. 5598246)

 

Registrant’s goods and services for the registered mark VAULT (Reg. No. 5598246) are identified as follows:

 

Class 009:  Computer software that provides web-based access to applications and services through a web operating system or portal interface

 

Class 042:  Computer project management services; providing an Internet website portal featuring technology that allows customers to access their projects for computer project management purposes to remotely manage, modify and provide input into the creation and management of their computer network projects; providing a web-based on-line portal featuring technology that allows customers to access their projects for computer project management purposes to remotely manage, modify and provide input into the creation and management of their computer network projects

 

In this case, the registration uses broad wording to describe its goods as software to provide web-based access to applications and services through a web operating system or portal interface, which presumably encompasses all goods and services of the type described, including applicant’s narrower identification for providing access to applications and services through a web operating system or portal interface via software as a service.  In addition, registrant’s broad identification for computer project management services also encompasses applicant’s narrower identification software as a service for project management, a particular type of computer project management service.  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, based on the description of the goods and services stated in the application and registration at issue, applicant’s and registrant’s goods and services are encompassing and are considered related. 

 

II.              Comparison of the Goods and Services with VAULT (Reg. No. 4065839)

 

Registrant’s goods and services for the registered mark VAULT (Reg. No. 4065839) are identified as follows:

           

Class 009:  Computer application software for mobile phones, personal computers, and internet websites, namely, software for use in electronic storage and security of personal data

 

In this case, the application uses broad wording to describe among its goods downloadable software for encryption, which presumably encompasses all goods of the type described, including registrant’s narrower identification for computer software used in electronic storage and security of personal data, as encryption is a method of protecting data.  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, based on the description of the goods and services stated in the application and registration at issue, applicant’s and registrant’s goods and services are encompassing and are considered related. 

 

In summary, applicant’s and registrant’s marks create the same commercial impression, and the goods and services the applicant’s mark identifies are sufficiently related to the registrant’s goods and services such that consumers are likely to be confused as to the source of these goods and services.  Accordingly, 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 by submitting evidence and arguments in support of registration.  However, if applicant responds to the refusal, applicant must also respond to the requirements set forth below.

 

IDENTIFICATION OF GOODS AND SERVICES

 

Class 009:

 

The wording “Software to execute and record financial transactions by way of a blockchain technology or a distributed ledger, including transactions with the use of smart contracts” in the identification of goods is indefinite and must be clarified because applicant must specify that the software is recorded or downloadable in nature.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Class 042:

 

The wording “software as a service (SaaS) services featuring software for providing access to applications and services, namely, providing access to applications and services through a web operating system or portal interface” in the identification of services is indefinite and must be clarified because applicant must specify the type of applications and services provided (e.g., banking, financial, accounting, etc.).  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Applicant must correct the punctuation in the identification to clarify the individual items in the list of services.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01(a).  Proper punctuation in identifications is necessary to delineate explicitly each product or service within a list and to avoid ambiguity.  Commas, semicolons, and apostrophes are the only punctuation that should be used in an identification of services.  TMEP §1402.01(a).  An applicant should not use colons, periods, exclamation points, and question marks in an identification.  Id.  In addition, applicants should not use symbols in the identification such as asterisks (*), at symbols (@), or carets.  Id.

 

In general, commas should be used in an identification (1) to separate a series of related items identified within a particular category of services, (2) before and after “namely,” and (3) between each item in a list of services following “namely” (e.g., personal care products, namely, body lotion, bar soap, shampoo).  Id.  Semicolons generally should be used to separate a series of distinct categories of services within an international class (e.g., personal care products, namely, body lotion; deodorizers for pets; glass cleaners).  Id. 

 

In this case, the wording “and accounting, tax payment filing, business process management, and inventory management, estimating, job costing, employee time tracking, business operations management and project management” in the identification of services is indefinite and must be clarified because this wording appears to  have been intended to be included in the prior identification clause for “Software as a service (SAAS) services featuring software for accounting, bookkeeping, transaction processing, transaction management, tax preparation and planning, business process management, and accounting, and tax planning”.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Therefore, the Examining Attorney has provided a suggestion for incorporating this wording into the previous entry in the identification of services in Class 042.  Furthermore, applicant must clarify the nature of the software for “estimating, job costing” because the current identification is unclear as to the function of the non-downloadable software.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may instead specify that the software is for providing job cost estimates. 

 

In addition, this identification includes duplicate entries for “accounting” and “business process management”.   Applicant is advised to delete or modify these duplicate entries.  See generally TMEP §§1402.01, 1402.01(a).  If applicant does not respond to this issue, be advised that the USPTO will remove duplicate entries from the identification prior to registration.  If modifying one of the duplicate entries, applicant may amend it to clarify or limit the services, but not to broaden or expand the services 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 services may not later be reinserted.  TMEP §1402.07(e).

 

The wording “Software as a service (SAAS) services featuring software for business operation, business administration and office functions of a bank” in the identification of services is indefinite and must be clarified because applicant must provide greater specificity as to the function of the software (e.g., service desk management, accounting, human resources management, etc.) and more clearly indicate that the services are provided in the field of banking.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Applicant may substitute the following wording, if accurate (Examining Attorney’s suggestions in bold font):

 

Class 009:  Computer software, namely, downloadable middleware for use within a decentralized computer communications network which allows smart contracts in the nature of software that controls digital contracts to securely, quickly, and auditably connect to external data sources in the nature of data feeds featuring user-defined information, application programming interfaces (APIs) and bank payment infrastructure; Downloadable software to execute and record financial transactions by way of a blockchain technology or a distributed ledger, including transactions with the use of smart contracts; Downloadable computer software for encryption; none of the aforesaid goods relating to the misconduct reporting of fraud detection

 

Class 035:  Computer database management; computer database management services; computerised accounting; computerised book-keeping; 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; none of the aforesaid services relating to the misconduct reporting of fraud detection

 

Class 042:  Software as a service (SaaS) services featuring software for providing access to applications and services, namely, providing access to {specify, e.g., banking, financial, accounting) applications and services through a web operating system or portal interface; Computer services, namely, providing temporary use of online non-downloadable middleware for use within a decentralized computer communications network which allows smart contracts in the nature of software that controls digital contracts to securely, quickly, and auditably connect to external data sources in the nature of data feeds featuring user-defined information, application programming interfaces (APIs) and bank payment infrastructure; software as a service (SaaS) services featuring computer software for use within a decentralized computer communications network which allows smart contracts in the nature of software that controls digital contracts to securely, quickly, and auditably connect to external data sources in the nature of data feeds featuring user-defined information, application programming interfaces (APIs) and bank payment infrastructure; Software as a service (SAAS) services featuring software for accounting, bookkeeping, transaction processing, transaction management, tax preparation and planning, business process management, tax planning, tax payment filing, inventory management, providing job cost estimates, employee time tracking, business operations management, and project management; Software as a service (SAAS) services featuring software for administering employee payroll; Software as a service (SAAS) services featuring software to import contacts and financial data from other electronic services and software; Software as a service (SAAS) services featuring software for {specify function of software, e.g., service desk management, accounting, human resources management} in the field of banking; Providing temporary use of non-downloadable cloud-based software for calculating balance sheets, P and L statements and regulatory reports; Computer systems integration services; none of the aforesaid services relating to the misconduct reporting of fraud detection

 

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).

 

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.

 

FOREIGN REGISTRATION REQUIRED

 

The application specifies a basis under Trademark Act Section 44(e); however, it does not include a copy of a foreign registration.  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, the 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.

 

A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in the applicant’s country of origin.  TMEP §1004.01.  If an applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, the applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to the applicant’s country of origin.  TMEP §1016.

 

Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin.  If the foreign registration is not written in English, applicant must also provide an English translation.  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).

 

Furthermore, the application specifies both an intent to use basis under Trademark Act Section 1(b) and reliance on a foreign registration(s) under Section 44(e).  See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.34(a)(2)-(3).  However, the foreign registration alone may serve as a basis for obtaining a U.S. registration.  See 37 C.F.R. §2.34(a)(3); TMEP §806.01(d).  If applicant wants to rely on the foreign registration under Section 44(e) as the sole basis, applicant can request deletion of the Section 1(b) basis.  See 37 C.F.R. §2.35(b)(1); TMEP §806.04. 

 

Alternatively, as applicant has not yet submitted the foreign registration or otherwise perfected the Section 44(e) basis, applicant can amend the application to rely solely on the Section 1 basis and request deletion of the Section 44(e) basis.

 

Unless applicant indicates otherwise, the USPTO will presume that applicant is relying on both Sections 1(b) and 44(e).  Thus, although the mark may be approved for publication, it will not register until an acceptable allegation of use has been filed for the goods and/or services based on Section 1(b).

 

ATTORNEY BAR INFORMATION AND ATTESTATION REQUIRED

 

Attorney bar information required.  Applicant’s attorney must provide the following bar information:  (1) his or her bar membership number, if the bar provides one; (2) the name of the U.S. state, commonwealth, or territory of his or her bar membership; and (3) the year of his or her admission to the bar.  37 C.F.R. §2.17(b)(3).  This information is required for all U.S.-licensed attorneys who are representing trademark applicants at the USPTO.  Id.  If the attorney’s bar does not issue bar membership numbers, applicant must state this for the record.  See id.

 

Attorney attestation required.  Applicant’s attorney must provide the following statement:  “I attest that I am an attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory).”  See 37 C.F.R. §2.17(b)(3).  This is required for all U.S.-licensed attorneys who are representing trademark applicants at the USPTO.  Id. 

 

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 and/or requirements 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 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  

 

 

/Laura Taraban/

Laura Taraban

Trademark Examining Attorney

Law Office 127

(571) 272-3352

laura.taraban@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 31, 2019 for

U.S. Trademark Application Serial No. 88466751

 

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. 

 

 

/Laura Taraban/

Laura Taraban

Trademark Examining Attorney

Law Office 127

(571) 272-3352

laura.taraban@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 31, 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.”