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:  February 19, 2020

 

 

 

This Office action is in response to applicant’s communication filed on January 30, 2020.  Please note that all issues not discussed in this office action have been resolved. 

 

 

The examining attorney maintains and continues the following refusal(s) and/or requirement(s): Section 2(e)(2) refusal and specimen information requirement. 

 

 

The examining attorney issues this Office action because of a new issue(s) raised in the applicant’s response.

 

 

 

SUMMARY OF ISSUES:

 

• Basis.
• Mark on the drawing and specimen differ.

 

 

 

BASIS FOR APPLICATION

 

The applicant attempted to add a §44(e) basis to the application.  However, no foreign registration or information was provided and the applicant appears to have attached specimens to the application where a foreign registration should appear.  In other words, it appears that the applicant did not intend to add a §44(e) basis to the application.  If the additional §44(e) basis was made in error, then the applicant may instruct the Office to delete the §44(e) basis from the application.

 

If the applicant intend to add a §44(e) basis based upon a foreign registration, then the following information applies.  To amend an application to one based on a valid foreign registration of the same mark for the same goods and/or services under Trademark Act Section 44(e), an applicant must provide the following:  (1) a true copy of the foreign registration or a proof of renewal from applicant’s country of origin, and, if the foreign registration or proof of renewal is not written in English, an English translation of it; (2) a list of goods and/or services that does not exceed the scope of the goods and/or services in the foreign registration; (3) the following statement, verified in 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.”  See TMEP §§1004, 1004.01(a)-(b).

 

Further, applicant’s country of origin must be a party to an international treaty or agreement with the United States that provides registration based on ownership of a foreign registration, or extends reciprocal registration rights to U.S. nationals.  TMEP §1004.

 

For more information about Section 44(e) basis requirements, and instructions on how to satisfy them online using the Trademark Electronic Application System (TEAS) form, please go to the Basis webpage.

 

 

 

MARK ON THE DRAWING AND SPECIMEN DIFFER

 

Mark shown on drawing does not match mark on specimen.  Registration is refused because the specimen does not show the mark in the drawing in use in commerce in International Classes 35 and 41, which is required in the application or amendment to allege use.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a), 1301.04(g)(i).  The mark appearing on the specimen and in the drawing must match; that is, the mark in the drawing “must be a substantially exact representation of the mark” on the specimen.  See 37 C.F.R. §2.51(a)-(b); TMEP §807.12(a). 

 

In this case, the specimen displays the mark as BI-US.  However, the drawing displays the mark as BI US without any hyphen between the wording.  The mark on the specimen does not match the mark in the drawing because of the hyphen in the mark on the specimens.  Applicant has thus failed to provide the required evidence of use of the mark in commerce.  See TMEP §807.12(a).

 

 

Response options.  Applicant may respond to this refusal by satisfying one of the following:

 

(1)       Submit a new drawing of the mark that shows the mark on the specimen and, if appropriate, an amendment of the description and/or color claim that agrees with the new drawing.  See 37 C.F.R. §2.72(a)-(b).  Applicant may amend the mark in the drawing to match the mark on the specimen but may not make any other changes or amendments that would materially alter the drawing of the mark.  See 37 C.F.R. §2.72(a)-(b); TMEP §807.14.

 

(2)       Submit a different specimen (a verified “substitute” specimen) for each applicable international class that (a) shows the mark in the drawing in actual use in commerce for the goods and/or services in the application or amendment to allege use, and (b) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use.

 

Examples of specimens.  Specimens for services must show a direct association between the mark and the services and include:  (1) copies of advertising and marketing material, (2) a photograph of business signage or billboards, or (3) materials showing the mark in the sale, rendering, or advertising of the services.  See 37 C.F.R. §2.56(b)(1), (c); TMEP §1301.04(a), (h)(iv)(C). 

 

Any web page printout or screenshot submitted as a specimen, whether for goods or services, must include the webpage’s URL and the date it was accessed or printed.  37 C.F.R. §2.56(c).

 

For more information about drawings and instructions on how to satisfy these response options using the online Trademark Electronic Application System (TEAS) form, see the Drawing webpage.

 

 

 

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.

 

The United States Patent and Trademark Office (USPTO) website provides information for those unfamiliar with the process of applying for federal trademark registration, such as an e-booklet about registering trademarks, FAQs, and more.  Two tools on the USPTO’s website that are particularly helpful during the examination process are the (1) informational videos and (2) application processing timelines.  The videos provide information in a broadcast news format regarding a range of issues that arise during the examination of an application, such as specimens and goods and services.  The application processing timelines provide information regarding the USPTO’s processing time for certain documents, as well as crucial legal deadlines.

 

The USPTO applies the following legal authority to a trademark application:

 

•  The Trademark Act of 1946 (15 U.S.C. §§1051 et seq.)

 

•  The Trademark Rules of Practice (37 C.F.R. pts. 2, 3, 6, 7, 11)

 

•  Precedential court and Trademark Trial and Appeal Board (TTAB) decisions

 

•  The Trademark Manual of Examining Procedure (TMEP)  is a manual written by USPTO trademark attorneys that explains the laws and procedures applicable to the trademark application, registration, and post-registration processes.  The USPTO updates the TMEP periodically to reflect changes in law, policy, and procedure. 

 

•  The Trademark Trial and Appeal Board Manual of Procedure (TBMP)

 

 

 

APPLICANT MAY WISH TO HIRE A PRIVATE ATTORNEY

 

Because of the legal technicalities and strict deadlines of the trademark application process, applicant is encouraged to hire a private attorney who specializes in trademark matters to assist in this process.  The assigned trademark examining attorney can provide only limited assistance explaining the content of an Office action and the application process.  USPTO staff cannot provide legal advice or statements about an applicant’s legal rights.  TMEP §§705.02, 709.06.  See Hiring a U.S.-licensed trademark attorney for more information. 

 

 

Generally, non-attorneys, e.g., non-attorney persons from a trademark assistance company, cannot:  prepare an application, response, post-registration maintenance document, or other document to be filed in the USPTO; sign amendments, responses to Office actions, petitions to the Director under 37 C.F.R. §2.146, requests to change the correspondence address, or letters of express abandonment; authorize issuance of examiner's amendments and priority actions; or otherwise represent an applicant, registrant, or party to a proceeding in the USPTO.  See 37 C.F.R. §§11.5(b)(2), 11.14(b); TMEP §§602.01, 608.01. 

 

 

The USPTO takes the unauthorized practice of trademark law very seriously. Your trademark submission can be rejected, or the legal validity of your trademark registration could be jeopardized, if you take advice or receive assistance from someone who is not authorized to practice law before the USPTO. 

 

See: http://www.gov.uspto.report/trademark/trademark-updates-and-announcements/proper-representation-trademark-matters.

 

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. 

Don’t be fooled by company names that sound like government agencies or offers that contain government data.  Some company names may include terms like “United States,” “U.S.,” “Trademark,” “Patent,” “Registration,” “Office,” or “Agency.”  Some offers and notices may include official government data publicly available from USPTO records, or refer to other government agencies and sections of the U.S. Code.

All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”

For information on how to identify these offers and notices, and what to do if you receive one, see:

http://www.gov.uspto.report/trademarks-getting-started/caution-misleading-notices

 

QUESTIONS ABOUT THIS ACTION

If the applicant has technical questions about the TEAS response to Office action form, the applicant may send technical questions to the TEAS Support Team at TEAS@uspto.gov via e-mail.  Please include your name, telephone number, serial number and/or registration number, a description of the issue, including the name of the TEAS form you are having problems with (e.g., “Response to Office Action Form,” “Request for Extension of Time to File a Statement of Use,” etc.), and a screen shot of any error message that you are receiving.  You should receive a response within two (2) hours if the e-mail message is submitted during normal business hours. 

 

For status inquiries or copies of documents, an applicant may check the status of or view documents filed in an application or registration using the Trademark Status and Document Retrieval (TSDR) system twenty-four (24) hours a day, seven (7) days a week.  Enter the application serial number or registration number and click on “Status” or “Documents.”  Do not attempt to check status until approximately four to five (4-5) days after submission of a filing, to allow sufficient time for all USPTO databases to be updated.  For help in resolving technical glitches, please email TSDR@uspto.gov.

 

For all other non-legal matters, including petitions to revive or reinstate an application, please contact the Trademark Assistance Center (TAC).  TAC may be reached by e-mail at TrademarkAssistanceCenter@uspto.gov or by telephone at (800) 786-9199.  For non-technical matters, TAC is open from 8:30 a.m. to 8:00 p.m. Eastern Standard Time (EST), Monday through Friday, except on federal government holidays.  A list of federal government holidays is available at the following website: http://www.opm.gov/policy-data-oversight/snow-dismissal-procedures/federal-holidays/.

 

If applicant has questions regarding the legal issues in this Office action, please call the assigned trademark examining attorney.

 

 

How to respond.  Click to file a response to this nonfinal Office action.    

 

 

/Brian Pino/

Examining Attorney

Law Office 114

571.272.9209 Telephone

Brian.Pino2@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 19, 2020 for

U.S. Trademark Application Serial No. 88495162

 

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. 

 

 

/Brian Pino/

Examining Attorney

Law Office 114

571.272.9209 Telephone

Brian.Pino2@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 19, 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.”