To: | CHILMARK LABS, INC. (trademarks@ems-legal.com) |
Subject: | U.S. Trademark Application Serial No. 88495383 - SOLVIVA - T-13862-US |
Sent: | January 28, 2020 11:18:28 AM |
Sent As: | ecom103@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88495383
Mark: SOLVIVA
|
|
Correspondence Address: |
|
Applicant: CHILMARK LABS, INC.
|
|
Reference/Docket No. T-13862-US
Correspondence Email Address: |
|
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: January 28, 2020
This Office action is in response to applicant’s communication filed on January 27, 2020. Applicant’s communication is referenced hereinafter as “Response”.
The previous Office Action of September 26, 2019, and all supporting evidence attached thereto, is incorporated by reference herein.
After review of the Response, the following is determined:
New ReQUIREMENT: TRANSLATION; INQUIRY ON WORDING IN MARK – REQUIREMENT MAINTAINED AND CONTINUED
In response to the previous inquiry on wording in the mark that appeared to be foreign, applicant provided a translation of “SOLVIVA in the mark is Sun Live or Sun Life (in Spanish and Portuguese)”; however, the attached translation evidence indicates a translation of “Sun Living” in Spanish/Portuguese. Applicant is requested to clarify the translation.
New Requirement: submitted assignment documents do not include §10 “Successor” language - itu
An intent-to-use application is void if it was filed in the name of a party who was not entitled to use the mark on the application filing date. 37 C.F.R. §2.71(d); see Am. Forests v. Sanders, 54 USPQ2d 1860, 1863 (TTAB 1999); TMEP §§803.06, 1201.02(b). In addition, an intent-to-use application is void if, prior to filing an allegation of use, the application is assigned to a party other than either a successor to the applicant’s business or to a portion of the applicant’s business to which the mark pertains, if that business is ongoing and existing. 15 U.S.C. §1060(a)(1); 37 C.F.R. §3.16; TMEP §501.01(a); see Cent. Garden & Pet Co. v. Doskocil Mfg. Co., 108 USPQ2d 1134, 1146 (TTAB 2013); Clorox Co. v. Chem. Bank, 40 USPQ2d 1098, 1105-06 (TTAB 1996).
A void application cannot be cured by amendment or assignment. TMEP §§803.06, 1201.02(b); see 37 C.F.R. §2.71(d). In such cases, the true owner may only file a new application. TMEP §803.06.
Therefore, applicant must submit a written statement clarifying that the assignment was in compliance with Trademark Act Section 10(a)(1). 15 U.S.C. §1060(a)(1); see TMEP §501.01(a).
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.
/Kaelie E. Kung/
Examining Attorney
Law Office 103
571-272-8265
kaelie.kung@uspto.gov
RESPONSE GUIDANCE