Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

FINAL OFFICE ACTION

 

The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned.  Respond using the Trademark Electronic Application System (TEAS) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

 

Issue date:  April 01, 2020

 

This Office Action is in response to applicant’s communication filed on March 12, 2020.

 

Introduction

In the initial Office Action, dated September 12, 2019, the trademark examining attorney refused registration of the applied-for mark, based on the following: Prior Pending Application; Name of an Individual Inquiry; Amended Identification of Services Required

 

The prior filed application has abandoned, and no longer presents a potential refusal. Based on applicant’s response, the ID requirement has been satisfied and is now withdrawn.

 

For the reasons set forth below, the name inquiry is now made FINAL.

 

FINAL Name Inquiry and Consent Required

In the initial Office Action, applicant was required to clarify whether the name DEONTAY WILDER in the mark identifies a particular living individual.  See 37 C.F.R. §2.61(b); TMEP §§813, 1206.03.  In applicant’s response, applicant clarified for the record that the name DEONTAY WILDER identifies a specific individual, and indicated that the named individual provided consent for his name to be registered. However, the attached consent statement is not signed, and as such, does not serve to show consent to register. Therefore, the requirement is now made FINAL.

 

To register a mark that consists of or comprises the name of a particular living individual, including a first name, pseudonym, stage name, or nickname, an applicant must provide a written consent personally signed by the named individual.  15 U.S.C. §1052(c); TMEP §§813, 1206.04(a).  

The applied-for mark includes the name of the following individual(s) applicant(s):  “DEONTAY WILDER.”  However, this individual(s) did not sign the application and the application does not include a written consent personally signed by this individual(s).  To register a mark that consists of or comprises the name of a particular living individual, including a first name, pseudonym, stage name, or nickname, an applicant must provide a written consent personally signed by the named individual.  15 U.S.C. §1052(c); TMEP §§813, 1206.04(a).  Consent to registration is presumed only when the particular individual identified in the mark is also the person who signed the application.  Alford Mfg. Co. v. Alfred Elecs., 137 USPQ 250, 250 (TTAB 1963), aff’d, 333 F.3d 912, 142 USPQ 168 (C.C.P.A. 1964); TMEP §1206.04(b). 

 

Because the individual(s) named in the mark did not sign the application and the application did not include a proper written consent, applicant must provide a statement that the name(s) in the mark identifies a particular living individual(s) and a written consent to register the name(s).  See 15 U.S.C. §1052(c); TMEP §§813.01(a)-(b), 1206.04(a), 1206.05. 

 

Accordingly, applicant must submit both of the following: 

 

(1)        The following statement:  “The name(s) shown in the mark identifies a living individual(s) whose consent(s) to register is made of record.”  If the name is a pseudonym, stage name, or nickname, applicant must provide the following statement:  “Deontay Wilder identifies Deontay Wilder, a living individual whose consent is of record.”

 

(2)        A written consent, personally signed by the named individual(s), as follows:  “I, Deontay Wilder, consent to the use and registration of my name, Deontay Wilder, as a trademark and/or service mark with the USPTO.”

 

For an overview of the requirements for names appearing in marks, and instructions on how to satisfy this requirement using the online Trademark Electronic Application System (TEAS) response form, see the Name/Portrait/Signature of Particular Living Individual in Mark webpage. 

 

Response Guidelines

Please call or email the assigned trademark examining attorney with questions about this Office action.  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).

 

 

Bechhofer, Yocheved

/Yocheved Bechhofer/

Examining Attorney

Law Office 114

571-272-9329

Yocheved.Bechhofer@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 April 01, 2020 for

U.S. Trademark Application Serial No. 88483711

 

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. 

 

 

Bechhofer, Yocheved

/Yocheved Bechhofer/

Examining Attorney

Law Office 114

571-272-9329

Yocheved.Bechhofer@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 April 01, 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.”