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 29, 2021

 

On 04/28/2020, action on this application was suspended pending receipt of a copy of the trademark registration certificate from applicant’s country of origin.  TMEP §§716.02(b), 1003.04(a)-(b).  The referenced registration certificate has been received by the Office, thus the requirement for a copy of the foreign registration certification has been satisfied.  15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016. 

 

Based on information and/or documentation in applicant’s response, the trademark examining attorney now issues the following new requirement(s):  Mark On Drawing Differs From Foreign Registration.  See TMEP §§706, 711.02. 

 

The following is a SUMMARY OF ISSUES that applicant must address:

 

•         NEW ISSUE:  Mark On Drawing Differs From Foreign Registration

 

Applicant must respond to all issues raised in this Office action within six (6) months of the date of issuance of this Office action.  37 C.F.R. §2.62(a); see TMEP §711.02.  If applicant does not respond within this time limit, the application will be abandoned.  37 C.F.R. §2.65(a).

 

MARK ON DRAWING DIFFERS FROM FOREIGN REGISTRATION

The USPTO cannot accept applicant’s drawing of the mark in the U.S. application because it does not match the mark in the foreign registration; that is, the mark in the drawing is not a “substantially exact representation of the mark” in the foreign registration.  See 37 C.F.R. §2.51(c); TMEP §§807.12(b), 1011.01.  Only slight, inconsequential variations are permitted between the mark in the U.S. application and the mark in the foreign registration.  In re Hacot-Colombier, 105 F.3d 616, 619, 41 USPQ2d 1523, 1525 (Fed. Cir. 1997); In re Larios S.A., 35 USPQ2d 1214, 1216-17 (TTAB 1995); TMEP §1011.01. 

 

In this case, the U.S. drawing displays the mark as ZESPRI with a design and no outline or border.  However, the foreign registration displays the mark as ZESPRI with a design that includes an outline or border.  The mark in the U.S. drawing does not match the mark on the foreign registration because the U.S. Drawing does not include the outlining element. 

 

Applicant may respond by satisfying one of the following:

 

(1)        Submit a new drawing of the mark that matches the foreign registration and an amendment of the description that agrees with the new drawing.  See 37 C.F.R. §§2.37, 2.72(c); TMEP §§807.12(b), 1011.03.  The following amended description and color claim is suggested, if accurate:  Color claim:  “The color(s) light green, dark green, purple and red is/are claimed as a feature of the mark”; Description: “The mark consists of a stylized fan design in alternating colors of light green and dark green above the stylized word "ZESPRI" in red above a crescent shape in green. The entire mark is outlined in a thin purple line. All instances of the color white represent background or transparent area only and are not claimed as a feature of the mark.”  Applicant may amend the mark in the drawing to match the mark in the foreign registration 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(c); TMEP §§807.14 et seq, 1011.03. 

 

(2)        Submit a request to delete the Trademark Act Section 44 filing basis from the application and proceed solely on the Section 1 basis.  See 15 U.S.C. §1051(a)-(b); 37 C.F.R. §2.35(b)(1); TMEP §806.04.

 

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

 

RESPONSE GUIDELINES

 

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.

 

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

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

 

 

/Jules Dean/

Trademark Attorney

United States Patent and Trademark Office

Law Office 120

Phone: (571) 272-5322

Jules.Dean@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 29, 2021 for

U.S. Trademark Application Serial No. 88524333

 

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. 

 

 

/Jules Dean/

Trademark Attorney

United States Patent and Trademark Office

Law Office 120

Phone: (571) 272-5322

Jules.Dean@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 29, 2021, 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.”