United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 88520897
Mark: WANDO
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Correspondence Address: TWO INTERNATIONAL PLACE, SUITE 2330
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Applicant: SODEXO
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Reference/Docket No. N/A
Correspondence Email Address: |
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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: October 08, 2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
Applicant's Voluntary Amendment dated September 16, 2019 has been entered into the record.
SUMMARY OF ISSUES PRESENTED IN THIS OFFICE ACTION:
· Section 2(d) Refusal—Likelihood of Confusion
· Prior-filed Application—Advisory
· Identification Amendment Required
· Multi-Class Application Requirements
· Mark Description Amendment Required
· Section 44(d) Sole Basis With Intent To Perfect To Section 44(e)—Foreign Registration Required
SECTION 2(d) REFUSAL—LIKELIHOOD OF CONFUSION
Applicant’s mark is “WANDO” and design, for use with:
Class 9: Downloadable computer software applications; applications for mobile telephones; computer software and mobile software applications for online booking of restaurants and catering services; computer software and mobile software applications for online booking of workspaces and meeting rooms; computer software and mobile software applications for online requesting repair of office apparatus and installation of office apparatus; computer software and mobile software applications for requesting emergency action for security issues; computer software and mobile software applications for requesting emergency action for sanitary issues; computer software and mobile software applications for commercial intermediation services; computer software and mobile software applications for providing secure payment for commercial transactions; computer software and mobile software applications for issuing promotional vouchers
Class 35: Commercial intermediation services; sales promotion for others; presentation of goods on all communication media for retail sale; commercial information by means of mobile applications; commercial information via websites; organization and management of customer loyalty business operations; issuing of promotional vouchers
Class 36: Providing secure payment of commercial transactions; issuing of vouchers; online secure payment services; providing financial information through websites and mobile applications
Class 37: Repair of air conditioning apparatus; repair of air cooling apparatus; repair of elevators; repair of escalators; vehicle breakdown assistance (repair); repair of boilers; repair of heating apparatus; repair and interference suppression of electrical apparatus; repair of food and beverage distribution apparatus; repair of ovens; repair of kitchen equipment; repair of refrigerating apparatus; repair of locks; repair of fire alarm devices; repair and maintenance of fire-extinguishing apparatus; repair of burglar alarms; repair of security systems; repair of machines; furniture restoration; repair of gas and water installations; repair of power generation apparatus and installations; repair of computer networks and telecommunication networks; repair of telecommunication apparatus; repair of computers; repair of computer hardware; repair of office apparatus; repair of telephones; repair of telephone cables; repair of facsimile machines; installation of air-conditioning apparatus; installation of elevators; installation of escalators; boiler installation; installation of heating apparatus; electrical installations for buildings; installation of food and beverage distribution apparatus; installation of kitchen equipment; installation of fire alarm devices; installation of fire extinguishers apparatus; installation of burglar alarms; installation of security systems; installation of supplying gas and water apparatus and equipment; installation of energy production apparatus and devices; installation of computer and telecommunication networks; installation of telecommunication apparatus; installation of computers; installation of computer hardware; installation of office apparatus; installation of telephones; installation of telephone cables; installation of facsimile machines; installation of office furniture; maintenance and cleaning of buildings; window cleaning; cleaning of buildings (exterior surface); disinfection; rat exterminating; vehicle maintenance (servicing); vehicle cleaning; vehicle washing; cleaning of clothing; laundering
Class 39: Delivery of goods; delivery of flowers
Class 43: Online booking of catering services; online information relating to menus offered in restaurants and company restaurants; services for providing food and drink; hotel services; rental of meeting rooms; temporary providing of offices, meeting rooms, exhibition rooms, seminar rooms and conference rooms
Class 45: Concierge services
The registered marks are as follows:
U.S. Registration No. 4675344 “WAND”, for use with:
Class 42: Software as a service (SAAS) services featuring software for management of contingent workforce personnel
U.S. Registration No. 5237345 “WAND”, for use with:
Class 9: stereos for personal and commercial use; wireless stereos for personal and commercial use; mp3 players and digital audio players; audio amplifiers; stereo receivers; audio speakers; amplifier for wireless communications; wireless computer peripherals; wireless hand-held devices for use in controlling a music system; remote controls for digital music systems; remote controls for stereos; handheld devices for playing, organizing, downloading, transmitting, manipulating and reviewing audio, and media files; handheld devices for controlling speakers, amplifiers, stereo systems and entertainment systems; computer hardware and software for use in playing, organizing, downloading, transmitting, manipulating, and reviewing audio files and media files, and for developing and managing audio relay and separation systems; computer hardware and software for use in controlling speakers, amplifiers, stereo systems, home theater systems, and home entertainment systems; computer software for use in controlling digital music systems; computer hardware; computer peripherals; home theater systems comprised of digital music players, digital music controllers, speakers, amplifiers, and wireless handheld controllers; home entertainment systems comprised of digital music players, digital music controllers, speakers, amplifiers, and wireless handheld controllers
U.S. Registration No. 5299067 “WANDS”, for use with:
Class 9: Computer game software; computer game entertainment software; downloadable electronic games programs; video game software; games software for use on mobile phones, tablets and other electronic mobile devices; games software downloadable to mobile phones, tablets and other electronic mobile devices; computer software applications featuring computer games; virtual reality game software; augmented reality game software; computer programs for video and computer games; electronic game software; electronic game software for wireless devices
Class 41: Electronic game services provided by means of the Internet; electronic game services, namely, providing temporary use of non-downloadable computer and video games; providing non-downloadable electronic games for mobile phones, tablets and other electronic mobile devices; providing interactive single and multi-player electronic games via the internet; publishing of computer game software, electronic games and video game software; video game entertainment services, namely, providing online computer and video games; operation of online game sites, namely, providing a website featuring online computer and video games; electronic game services, namely, provision of computer games online, on online social networks, and by means of a global computer network
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 goods and 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 goods and 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.
In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods and services, and similarity of the trade channels of the goods and services. See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.
Comparison of Marks
Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)); TMEP §1207.01(b).
Applicant's mark is “WANDO” and design, and the registrants’ marks are “WAND” and “WANDS”. When evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and services. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii). Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed. In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)). Thus, the dominant portion of the applicant's mark is the word “WANDO” because consumers will be more likely to refer to this word portion of the mark.
Comparison of Goods and Services
As Compared to Goods under Registration No. 5299067 “WANDS”
Determining likelihood of confusion is based on the description of the goods and 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 application uses broad wording to describe “downloadable computer software applications; applications for mobile telephones,” which presumably encompasses all goods of the type described, including registrant’s more narrow “downloadable electronic games programs; games software for use on mobile phones, tablets and other electronic mobile devices; games software downloadable to mobile phones, tablets and other electronic mobile devices; computer software applications featuring computer games.” 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 goods 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 goods 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 goods are related.
Further, the compared goods and 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 goods and/or 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 goods include downloadable computer software applications and applications for mobile telephones, and the registrant's services also include providing temporary use of non-downloadable computer and video games. Applicant's and the registrant's goods and services are related because the goods and services of the respective parties are of a type that are commonly provided by a single source under the same mark. See attached evidence from King, MSN Games, and Big Fish Games showing goods and services such as downloadable computer software applications, applications for mobile telephones, and providing temporary use of non-downloadable computer and video games provided by a single source under the same mark. Therefore, consumers familiar with the registrant's services will also expect applicant's goods to be provided by the registrant.
As Compared to Goods under Registration No. 5237345 “WAND”
As previously discussed, determining likelihood of confusion is based on the description of the goods and stated in the application and registration at issue, not on extrinsic evidence of actual use.
In this case, the application uses broad wording to describe “downloadable computer software applications; applications for mobile telephones,” which presumably encompasses all goods of the type described, including registrant’s more narrow “computer… software for use in playing, organizing, downloading, transmitting, manipulating, and reviewing audio files and media files, and for developing and managing audio relay and separation systems; computer… software for use in controlling speakers, amplifiers, stereo systems, home theater systems, and home entertainment systems; computer software for use in controlling digital music systems; computer hardware.” Thus, applicant’s and registrant’s goods are legally identical.
Additionally, the goods 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. Thus, applicant’s and registrant’s goods are related.
Further, the compared goods and services need not be identical or even competitive to find a likelihood of confusion. They need only be related in some manner such that they could give rise to the mistaken belief that the goods and services emanate from the same source.
Applicant's services include repair of computer networks and telecommunication networks, repair of telecommunication apparatus, repair of computers, and repair of computer hardware, and the registrant's goods include mp3 players and digital audio players, computer hardware, computer peripherals, and audio speakers. Applicant's and the registrant's goods and services are related because the goods and services of the respective parties are of a type that are commonly provided by a single source under the same mark. See attached evidence from HP, Apple, and Dell showing goods such as mp3 players and digital audio players, computer hardware, computer peripherals, and audio speakers and services such as repair of computer networks and telecommunication networks, repair of telecommunication apparatus, repair of computers, and repair of computer hardware provided by a single source under the same mark. Therefore, consumers familiar with the registrant's goods will also expect applicant's services to be provided by the registrant.
As Compared to Goods under Registration No. 4675344 “WAND”
Applicant's goods include computer software and mobile software applications for online booking of workspaces and meeting rooms, and the registrant's services are software as a service (SAAS) services featuring software for management of contingent workforce personnel. Applicant's and the registrant's goods and services are related because the goods and services of the respective parties are of a type that are commonly provided by a single source under the same mark. See attached evidence from Asure Software, Habu, Aqilquest, and CoWork.io showing computer software and mobile software applications for online booking of workspaces and meeting rooms and software as a service (SAAS) services featuring software for management of contingent workforce personnel provided by a single source under the same mark. Therefore, consumers familiar with the registrant's services will also expect applicant's goods to be provided by the registrant.
Conclusion
The relatedness of the goods and services here, coupled with the similar marks at issue, requires registration of the applied-for mark to be refused under Section 2(d) of the Trademark Act.
PRIOR-FILED APPLICATION—ADVISORY
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
IDENTIFICATION AMENDMENT REQUIRED
Select entries in applicant's identification are indefinite because the wording is overly vague and the nature, use, or purpose of applicant's goods and services is unclear. See TMEP §§1402.01, 1402.03. Other entries are indefinite because the wording describes goods and services in multiple International Classes. See TMEP §§1402.01, 1402.03.
Therefore, applicant must remove the parentheses from the identification and incorporate any parenthetical or bracketed information into the description of the goods and services.
If accurate, applicant may adopt the following wording and classes:
Class 9: Downloadable computer software applications for {specify items, e.g., mobile phones, portable media players, handheld computers}, namely, software for {specify the function of the programs, e.g., use in database management, use in electronic storage of data}; applications for mobile telephones, namely, downloadable mobile applications for {indicate use, e.g., use in database management, use in electronic storage of data}; downloadable computer software and downloadable software applications for mobile phones, both of the foregoing for online booking of restaurants and catering services; downloadable computer software and downloadable software applications for mobile phones, both of the foregoing for online booking of workspaces and meeting rooms; downloadable computer software and downloadable software applications for mobile phones for online requesting of repair of office apparatus and installation of office apparatus; downloadable computer software and downloadable software applications for mobile phones for requesting emergency action for security issues; downloadable computer software and downloadable software applications for mobile phones for requesting emergency action for sanitary issues; downloadable computer software and downloadable software applications for mobile phones for {indicate specific function in relation to commercial intermediation services, e.g., booking, requesting quotes for} commercial intermediation services; downloadable computer software and downloadable software applications for mobile phones for providing secure payment for commercial transactions; downloadable computer software and downloadable software applications for mobile phones for issuing promotional vouchers
Class 35: Commercial intermediation services, namely, business intermediary services relating to the matching of potential private investors with entrepreneurs needing funding; sales promotion for others; presentation of goods on all communication media for retail sale, namely, {indicate specific services, e.g., providing television home shopping services in the field of general consumer merchandise}; providing commercial information in the field of {indicate subject matter}, accessible by means of mobile applications; providing commercial information in the field of {indicate subject matter} via websites; organization and management of customer loyalty business operations, namely, business administration of consumer loyalty programs; issuing of promotional vouchers, namely, promoting the goods of others by providing vouchers for the goods of others
Class 36: Financial transaction services, namely, providing secure commercial transactions and payment options; issuing of vouchers of cash value for the payment of goods and services of others; financial transaction services, namely, providing secure payment options online; providing financial information through websites and mobile applications
Class 37: Repair of air conditioning apparatus; repair of air cooling apparatus; repair of elevators; repair of escalators; vehicle breakdown assistance, namely, vehicle repair; repair of boilers; repair of heating apparatus; repair and interference suppression services for electrical apparatus; repair of food and beverage distribution apparatus; repair of ovens; repair of kitchen equipment; repair of refrigerating apparatus; repair of locks; repair of fire alarm devices; repair and maintenance of fire-extinguishing apparatus; repair of burglar alarms; repair of security systems; repair of {indicate type of machines being repaired, e.g., electronic, office, telecommunication, cleaning} machines; furniture restoration; repair of gas and water installations; repair of power generation apparatus and installations; repair of computer networks and telecommunication networks; repair of telecommunication apparatus; repair of computers; repair of computer hardware; repair of office apparatus, namely, repair of {indicate specific office apparatuses repaired, e.g., telephones, fax machines, copiers}; repair of telephones; repair of telephone cables; repair of facsimile machines; installation of air-conditioning apparatus; installation of elevators; installation of escalators; boiler installation; installation of heating apparatus; installation of electrical {indicate specific electrical elements being installed} for buildings; installation of food and beverage distribution apparatus; installation of kitchen equipment; installation of fire alarm devices; installation of fire extinguishers apparatus; installation of burglar alarms; installation of security systems; installation of supplying gas and water apparatus and equipment; installation of energy production apparatus and devices; installation of computer and telecommunication networks; installation of telecommunication apparatus; installation of computers; installation of computer hardware; installation of office apparatus namely, installation of {indicate specific office apparatuses repaired, e.g., telephones, fax machines, copiers}; installation of telephones; installation of telephone cables; installation of facsimile machines; installation of office furniture; maintenance and cleaning of buildings; window cleaning; cleaning of building exteriors; disinfecting; rat exterminating other than for agriculture, aquaculture, forestry and horticulture; vehicle maintenance; vehicle cleaning; vehicle washing; cleaning of clothing; laundering
Class 39: Delivery of goods; delivery of flowers
Class 42: Providing temporary use of online, non-downloadable software for online booking of restaurants and catering services; Providing temporary use of online, non-downloadable software for online booking of workspaces and meeting rooms; Providing temporary use of online, non-downloadable software for use in online requesting of repair of office apparatus and installation of office apparatus; Providing temporary use of online, non-downloadable software for requesting emergency action for security issues; Providing temporary use of online, non-downloadable software for requesting emergency action for sanitary issues; Providing temporary use of online, non-downloadable software for {indicate specific function in relation to commercial intermediation services, e.g., booking, requesting quotes for} commercial intermediation services; Providing temporary use of online, non-downloadable software for providing secure payment for commercial transactions; Providing temporary use of online, non-downloadable software for issuing promotional vouchers
Class 43: Online booking of catering services; restaurant information services, namely, providing online information relating to menus offered in restaurants and company restaurants; services for providing food and drink; hotel services; rental of meeting rooms; providing of and reservation of temporary accommodations, namely, temporary provision of offices, meeting rooms, exhibition rooms, seminar rooms and conference rooms
Class 44: Rat exterminating for agriculture, aquaculture, horticulture and forestry; Concierge medicine services
Class 45: Personal concierge services for others comprising making requested {indicate type of appointments, e.g., doctor's, dentist's, hair, etc.} appointments to meet individual needs; hotel concierge services
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
Applicant must additionally respond to the requirement below.
MULTI-CLASS APPLICATION REQUIREMENTS
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule). The application identifies goods and/or services that are classified in at least 9 classes; however, applicant submitted a fee(s) sufficient for only 7 class(es). Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
See an overview of the requirements for a Section 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
Applicant must additionally respond to the requirement below.
MARK DESCRIPTION AMENDMENT REQUIRED
The following description is suggested, if accurate: The mark consists of the stylized word “WANDO” in blue font, and the design of a stylized red wand comprised of a seven-pointed star in red, with two overlapping curved lines in red below it, one in the form of a helical loop and the other doubled back so that its two halves are roughly parallel to each other. The color white is not claimed and is presented as background only.
Applicant must additionally respond to the requirement below.
SECTION 44(d) SOLE BASIS WITH INTENT TO PERFECT TO SECTION 44(e)—FOREIGN REGISTRATION REQUIRED
An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin. 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016. In addition, the applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law. 15 U.S.C. §1126(b); TMEP §§1002.01, 1004.
Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available. TMEP §1003.04(a). A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin. TMEP §1004.01. If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, the applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin. TMEP §1016. In addition, applicant must also provide an English translation if the foreign registration is not written in English. 37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b). The translation should be signed by the translator. TMEP §1004.01(b).
If the foreign registration is not yet available, applicant should inform the trademark examining attorney that the foreign application is still pending and request that the U.S. application be suspended until a copy of the foreign registration is available. TMEP §§716.02(b), 1003.04(a).
If applicant cannot satisfy the requirements of the Section 44(e) basis, applicant may amend the basis to Section 1(a) or 1(b), if applicant can satisfy the requirements for the new basis. See 15 U.S.C. §§1051(a)-(b), 1126(e); TMEP §806.03. Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration. See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.03(h).
RESPONSE GUIDELINES
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
/Justine N. Burke/
Justine N. Burke
Trademark Examining Attorney
Law Office 121
571-270-1631
Justine.Burke@uspto.gov
RESPONSE GUIDANCE
