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:  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:

• Requirement for clarification of identification and classification of goods – the proposed identification amendments are accepted and will be entered into the record; and
• Inquiry on wording in mark – appears to be foreign – the requirement is MAINTAINED AND CONTINUED, with a request for clarification.

 

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.

 

To permit proper examination of the application, applicant must submit an English translation of the foreign wording in the mark SOLVIVA.  37 C.F.R. §§2.32(a)(9), 2.61(b); see TMEP §809.  The following English translation is suggested:  The English translation of “SOLVIVA” in the mark is “Sun Living”.  TMEP §809.03.  See attached translation evidence.

 

New Requirement: submitted assignment documents do not include §10 “Successor” language - itu

 

Applicant has filed an assignment and submitted the assignment documents as part of the application record.  However, the assignment documents do not indicate that the intent-to-use application was assigned to a successor to applicant’s business as required by Trademark Act Section 10(a)(1).  15 U.S.C. §1060(a)(1).  Moreover, the application was filed under Section 1(b) and no allegation of use has been filed.  15 U.S.C. §1051(b).

 

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

• 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 January 28, 2020 for

U.S. Trademark Application Serial No. 88495383

 

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. 

 

 

/Kaelie E. Kung/

Examining Attorney

Law Office 103

571-272-8265

kaelie.kung@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 January 28, 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.”