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:  February 27, 2020

 

INTRODUCTION

 

The Office has reassigned this application to the undersigned trademark examining attorney.

 

This Office action is in response to applicant’s communication filed on 2/7/2020.

 

In a previous Office action dated 8/7/2019, the trademark examining attorney refused registration of the applied-for mark based on Trademark Act Section 2(d) for a likelihood of confusion with registered marks and Sections 1, 2, 3, and 45 for failure to show the mark used as a service mark in the specimen.

 

Based on applicant’s response, the trademark examining attorney notes that the Section 2(d) Refusal has been limited to one registered mark, but the refusals are both maintained and made FINAL. See 37 C.F.R. §2.63(b); TMEP §714.04.

 

SUMMARY OF ISSUES MADE FINAL that applicant must address:

• Section 2(d) Refusal: Likelihood of Confusion
• Failure to Function Refusal: Applied-for Mark as Used on Specimen Does Not Function

 

SECTION 2(d) REFUSAL: LIKELIHOOD OF CONFUSION

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 4898815.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached previously registration.

 

The applied-for mark is INSIDER in standard characters for “Retail store and online retail store services featuring perfumery, cosmetics, make-up, skincare and beauty products and accessories, bath and body products and accessories, and hair care products, preparations and accessories featuring a bonus incentive program for customers” in Class 035.

 

Reg. No. 4898815 is INSIDERS in standard characters for “Customer loyalty services and incentive award programs to promote the sale of its products and services, for commercial, promotional and/or advertising purposes” in Class 035.

 

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 goods [or services] and differences in the marks.”); TMEP §1207.01.

 

Similarity of the Marks

 

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).

 

Applicant’s mark is for INSIDER in standard characters.

 

Registrant’s mark is for INSIDERS in standard characters.

 

In the present case, applicant’s mark is merely the singular of registrant’s plural word. An applied-for mark that is the singular or plural form of a registered mark is essentially identical in sound, appearance, meaning, and commercial impression, and thus the marks are confusingly similar.  Swiss Grill Ltd., v. Wolf Steel Ltd., 115 USPQ2d 2001, 2011 n.17 (TTAB 2015) (holding “it is obvious that the virtually identical marks [the singular and plural of SWISS GRILL] are confusingly similar”); Weider Publ’ns, LLC v. D & D Beauty Care Co., 109 USPQ2d 1347, 1355 (TTAB 2014) (finding the singular and plural forms of SHAPE to be essentially the same mark) (citing Wilson v. Delaunay, 245 F.2d 877, 878, 114 USPQ 339, 341 (C.C.P.A. 1957) (finding no material difference between the singular and plural forms of ZOMBIE such that the marks were considered the same mark).

 

These marks are nearly 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 nearly 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 services.  Id.

 

Applicant has argued that its similar previous registrations, which include the term “INSIDER” have established its rights in the term, and should allow this application to proceed. Applicant argues that no likelihood of confusion exists because (1) applicant owns a prior registration for a substantially similar or identical mark for identical or identical in part services to those in the application, and (2) such registration has co-existed with the cited registration.  Applicant concludes there is no likelihood of confusion between the applied-for mark and registrant’s mark; therefore, the trademark examining attorney should withdraw the Trademark Act Section 2(d) refusal.   However, in In re Strategic Partners, Inc., 102 USPQ2d 1397, 1399-1400 (TTAB 2012), the Trademark Trial and Appeal Board only reversed a Section 2(d) refusal based on an applicant’s prior registration for the following unique set of facts:  (1) the marks in applicant’s prior registration and application were virtually identical (“no meaningful difference” existed between them, such that they were “substantially similar”); (2) the goods were identical in part; and (3) the prior registration had co-existed for at least five years with the cited registration (both being more than five years old and thus immune from attack on likelihood of confusion grounds).  See TMEP §1207.01.  The Board acknowledged these facts constituted a “unique situation,” such that an applicant’s prior registration would generally need to fit within these precise parameters to overcome a Section 2(d) refusal.  In re Strategic Partners, Inc., 102 USPQ2d at 1400; see In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d 1790, 1793-94 (TTAB 2017); TMEP §1207.01. In this case, by contrast, applicant’s prior registration does not correspond to the facts set forth in In re Strategic Partners, Inc.  See TMEP §1207.01.  Specifically, applicant’s prior registration is not for the same mark.  Thus applicant’s prior registration does not obviate the Section 2(d) refusal.

 

Accordingly, the applied-for mark and registrant’s mark 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).

 

Applicant’s mark is for “Retail store and online retail store services featuring perfumery, cosmetics, make-up, skincare and beauty products and accessories, bath and body products and accessories, and hair care products, preparations and accessories featuring a bonus incentive program for customers” in Class 035.

 

Registrant’s mark is for “Customer loyalty services and incentive award programs to promote the sale of its products and services, for commercial, promotional and/or advertising purposes” in Class 035.

 

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 registrant uses broad wording to describe customer loyalty programs and retail store services featuring a wide variety of consumer goods, which presumably encompasses all services of the type described, including applicant’s more narrow identification which is limited to similar services, “a bonus incentive program for customers,” featuring perfumery, cosmetics, make-up, skincare and beauty products and accessories, bath and body products and accessories, and hair care products, preparations and accessories.  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)).  Thus, applicant’s and registrant’s services are related.

 

Thus, applicant’s and registrant’s 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).

 

Applicant has argued that the registered mark is weak. The Court of Appeals for the Federal Circuit and the Trademark Trial and Appeal Board have recognized that marks deemed “weak” are still entitled to protection under Section 2(d) against the registration by a subsequent user of a similar mark for closely related services.  TMEP §1207.01(b)(ix); see King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 1401, 182 USPQ 108, 109 (C.C.P.A. 1974); In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1246 (TTAB 2010).  Thus, this protection under Section 2(d) extends to marks registered on the Supplemental Register.  TMEP §1207.01(b)(ix); see, e.g., In re Morinaga Nyugyo Kabushiki Kaisha, 120 USPQ2d 1738, 1743 (TTAB 2016) (citing Towers v. Advent Software, Inc., 913 F.2d 942, 946, 16 USPQ2d 1039, 1042 (Fed. Cir. 1990); In re Research & Trademark Corp., 793 F.2d 1276, 1278, 230 USPQ 49, 49 (Fed. Cir. 1986); In re Clorox Co., 578 F.2d 305, 307-08, 198 USPQ 337, 340 (C.C.P.A. 1978)). Further, evidence and arguments that constitute a collateral attack on a cited registration, such as information or statements regarding a registrant’s nonuse of its mark, are not relevant during ex parte prosecution.  See In re Dixie Rests., 105 F.3d 1405, 1408, 41 USPQ2d 1531, 1534-35 (Fed. Cir. 1997); In re Peebles Inc., 23 USPQ2d 1795, 1797 n.5 (TTAB 1992); TMEP §1207.01(d)(iv).  Such evidence and arguments may, however, be pertinent to a formal proceeding before the Trademark Trial and Appeal Board to cancel the cited registration.

 

Applicant also argues that the registered mark is not used with cosmetic a beauty goods, as applicant’s mark is. However, as discussed above, registrant’s mark has a broadly worded identification that does not limit its field of use. The presumption under Trademark Act Section 7(b) is that the registrant is the owner of the mark and that their use of the mark extends to all services identified in the registration.  15 U.S.C. §1057(b).  In the absence of limitations as to channels of trade or classes of purchasers in the services in the registration, the presumption is that the services move in all trade channels normal for such services and are available to all potential classes of ordinary consumers of such services.  See In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); TMEP §1207.01(a)(iii).

 

Conclusion

 

The overriding concern is not only to prevent buyer confusion as to the source of the services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993).

 

Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant. TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).

 

In summary, applicant’s and registrant’s marks create the same commercial impression and the respective services are highly related. Therefore, consumers are likely to be confused and mistakenly believe that the services originate from a common source. Accordingly, registration must be refused under Section 2(d) of the Trademark Act.

 

Applicant should note the additional ground for refusal below.

 

FAILURE TO FUNCTION REFUSAL: APPLIED-FOR MARK AS USED ON SPECIMEN DOES NOT FUNCTION

 

Registration is refused because the applied-for mark, as used on the specimen of record, does not function as a service mark to identify and distinguish applicant’s services from those of others and to indicate the source of applicant’s services.  Trademark Act Sections 1, 2, 3, and 45, 15 U.S.C. §§1051-1053, 1127; see In re Keep A Breast Found., 123 USPQ2d 1869, 1879-80 (TTAB 2017); In re Moody’s Investors Serv., Inc., 13 USPQ2d 2043, 2048-49 (TTAB 1989); TMEP §§904.07(b), 1301.02 et seq.

 

The applied-for mark does not function as a service mark because “insider”, “VIB”, and “rouge” are shown in the specimen referring to categories within Sephora’s internal categorization system. This wording does not refer to the source of the retail services, which the specimen provides is Sephora.

 

Whether a designation functions as a mark depends on the commercial impression it makes on the relevant public; that is, whether purchasers would be likely to regard it as a source-indicator for the services.  See In re Keep A Breast Found., 123 USPQ2d 1869, 1879 (TTAB 2017) (quoting In re Eagle Crest Inc., 96 USPQ2d 1227, 1229 (TTAB 2010)); TMEP §1301.02.  The specimen and any other relevant evidence of use is reviewed to determine whether an applied-for mark is being used as a service mark.  See In re Keep A Breast Found., 123 USPQ2d at 1879 (quoting In re Eagle Crest Inc., 96 USPQ2d at 1229); TMEP §1301.02. 

 

Not every designation used in the advertising or performance of services functions as a service mark, even though it may have been adopted with the intent to do so.  In re Keep A Breast Found., 123 USPQ2d at 1879 (quoting Am. Velcro, Inc. v. Charles Mayer Studios, Inc., 177 USPQ 149, 154 (TTAB 1973)); see TMEP §1301.02.  A designation can only be registered when purchasers would be likely to regard it as a source-indicator for the services.  TMEP §1301.02; see In re Moody’s Investors Serv. Inc., 13 USPQ2d 2043, 2047-49 (TTAB 1989).

 

Applicant has argued that its services are “Retail store and online retail store services featuring perfumery, cosmetics, make-up, ... featuring a bonus incentive program for customers” (emphasis added), and that the specimen shows this incentive program for customers. The mark appears within a larger title of “2019 Beauty Insider Benefits”; the word “Insider” appears buried in the text of the specimen and does not attract the consumer’s eye for recognition as a mark. See In re Osterberg, 83 USPQ2d 1220, 1223 (TTAB 2007) (finding the mark not prominently displayed because it was buried in text describing the mark and, while the mark was shown in bold font, so was other matter); TMEP §1301.04(f)(i).

 

The specimen must show the mark used in a manner that creates in the minds of potential consumers a direct association between the mark and the services. In re Universal Oil Prods. Co., 476 F.2d 653, 655, 177 USPQ 456, 457 (C.C.P.A. 1973) ("The minimum requirement is some direct association between the offer of services and the mark sought to be registered therefor."); see also In re Advert. & Mktg. Dev., Inc., 821 F.2d 614, 620, 2 USPQ2d 2010, 2014 (Fed. Cir. 1987) ("The ‘direct association’ test does not create an additional or more stringent requirement for registration; it is implicit in the statutory definition of ‘a mark used . . . to identify and distinguish the services of one person . . . from the services of others and to indicate the source of the services.’"); In re WAY Media, Inc., 118 USPQ2d 1697, 1698 (TTAB 2016) ("A specimen that shows only the mark with no reference to, or association with, the services does not show service mark usage."); In re Johnson Controls, Inc., 33 USPQ2d 1318, 1320 (TTAB 1994) ("While the nature of the services does not need to be specified in the specimens, there must be something which creates in the mind of the purchaser an association between the mark and the service activity."). Direct association is the minimum the specimen must show, and it may be established textually, contextually, or logically. In re Universal Oil Prods. Co., 476 F.2d at 655, 177 USPQ at 457. What is necessary to establish direct association differs depending on the type of specimen submitted, that is, whether it is an advertising specimen or a rendering specimen.

 

For specimens showing the mark used in advertising the identified services, in order to establish the requisite direct association the specimen must contain a reference to the services and the mark must be used on the specimen to identify the services and their source. See In re WAY Media, Inc., 118 USPQ2d at 1698; In re Monograms Am., Inc., 51 USPQ2d 1317, 1318 (TTAB 1999). While the services need not be stated word for word, a "sufficient reference" to the services themselves or a general reference to the trade, industry, or field of use is required. See id.; In re Ralph Mantia Inc., 54 USPQ2d 1284, 1286 (TTAB 2000) (reversing the services refusal since the term "design" appeared on applicant’s letterhead stationery, envelope, and business cards and stating "[i]t is not necessary that the specific field of design, i.e., commercial art, also appear [on the services]. Here, the word ‘design’ alone is sufficient to create in the minds of purchasers an association between the mark and applicant's commercial art services."); In re Monograms Am., Inc., 51 USPQ2d at 1318; see also TMEP §1301.04(h). However, if the alleged reference to the services is so vague that the services cannot be discerned, the specimen will not be acceptable. In re Chengdu AOBI Info. Tech. Co., 111 USPQ2d 2080, 2082 (TTAB 2011); see In re Monograms Am., Inc., 51 USPQ2d at 1318. See TMEP §1301.04(i).

 

Applicant’s specimen does not present any direct association between the mark and the identified services. Therefore, the specimen does not show the applied-for mark functioning as a services mark for the services identified and cannot be accepted.

 

Failure to Function: Substitute Specimen or Amendment to the Filing Basis

 

Applicant may respond to this refusal by submitting a substitute specimen or amending applicant’s basis to intent to use under Section 1(b) for each applicable international class.

 

Submitting a substitute specimen:  Applicant may submit a substitute specimen that shows the applied-for mark used in commerce as a service mark for the services in the application, and the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “The substitute specimen was in use in commerce at least as early as the filing date of the application.”  37 C.F.R. §2.59(a); TMEP §904.05; see 37 C.F.R. §2.193(e)(1).  If submitting a substitute specimen requires an amendment to the dates of use, applicant must also verify the amended dates.  37 C.F.R. §2.71(c); TMEP §904.05. 

 

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).

 

To submit a verified substitute specimen online using the Trademark Electronic Application System (TEAS) response form, applicant should (1) answer “Yes” to form wizard question #2; and then, continuing on to the next portion of the form, do the following for each relevant class for which a substitute specimen is being submitted:  (2) under “Classification and Listing of Goods/Services/Collective Membership Organization,” select the following statement, “Check here to modify the current classification number; listing of goods/services; dates of use; and/or filing basis; or to submit a substitute specimen or foreign registration certificate.  If not checked, the changes will be ignored.”; (3) under “Specimen File,” attach a specimen (attachment may not exceed 5 megabytes); (4) describe what the specimen consists of; and (5) select the following statement: “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” [for an application based on Section 1(a), Use in Commerce] OR “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use” [for an application based on Section 1(b) Intent-to-Use]. Note:  When submitting a verified substitute specimen, the TEAS online response form requires two signatures:  one in the “Declaration Signature” section and one in the “Response Signature” section. 

 

Amending to Section 1(b):  If applicant cannot provide an acceptable substitute specimen, applicant may amend the application basis to intent to use under Section 1(b), for which no specimen is required, and the refusal will be withdrawn.  See TMEP §806.03(c).  However, if applicant amends the basis to Section 1(b), registration will not be granted until applicant later amends the application back to use in commerce by filing an acceptable allegation of use with a proper specimen.  See 15 U.S.C. §1051(c), (d); 37 C.F.R. §§2.76, 2.88; TMEP §1103.  If the same specimen is submitted with an allegation of use, the same refusal will likely issue.

 

To amend to Section 1(b), applicant must submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “Applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date.”  37 C.F.R. §2.34(a)(2); TMEP §806.01(b); see 15 U.S.C. §1051(b); 37 C.F.R. §§2.35(b)(1), 2.193(e)(1). 

 

To amend to Section 1(b) online using the TEAS response form, applicant should (1) answer “Yes” to form wizard question #2, and then, after proceeding to the next page in the form, do the following for each relevant class for which the basis is being amended:  (2) under “Classification and Listing of Goods/Services/Collective Membership Organization,” select the following statement: “Check here to modify the current classification number; listing of goods/services; dates of use; and/or filing basis; or to submit a substitute specimen or foreign registration certificate.  If not checked, the changes will be ignored.”; (3) under “Filing Basis Section 1(a),” uncheck the box for “Filing Basis Section 1(a)”and delete the information appearing in the Date of First Use of Mark Anywhere and Date of First Use of Mark in Commerce textboxes; and (4) check the box for “Filing Basis Section 1(b).”  Note:  When amending to Section 1(b), the TEAS online response form requires two signatures:  one in the “Declaration Signature” section and one in the “Response Signature” section. 

 

Although applicant’s mark has been refused registration, applicant may respond to the refusals by submitting evidence and arguments in support of registration.

 

ASSISTANCE

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06. 

 

The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

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).

 

 

/Kimberly M. Ray/

Examining Attorney

Law Office 122

(571) 272-7834

Kimberly.Ray@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 February 27, 2020 for

U.S. Trademark Application Serial No. 88468524

 

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. 

 

 

/Kimberly M. Ray/

Examining Attorney

Law Office 122

(571) 272-7834

Kimberly.Ray@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 February 27, 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.”