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:  October 15, 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.

 

SEARCH OF OFFICE’S DATABASE OF MARKS

 

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).

 

SUMMARY OF ISSUES:

• Refusal for Unacceptable Specimen
• Requirement for Clarification About Entity Type and Country of Citizenship/Organization
• Requirement for Acceptable Color Claim and Description of the  Mark
• Requirement for Acceptable Consent Statement
• Requirement for Information – Concurrent Use Statement

 

REFUSAL FOR UNACCEPTABLE SPECIMEN

 

Registration is refused because the specimen does not show the mark in the drawing in use in commerce in International Class 29, 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 drawing displays the mark as a portrait of a woman with the wording SUN at the bottom of the portrait.  However, the specimen displays the mark as simply the portrait of the woman.  The mark on the specimen does not match the mark in the drawing because the packaging does not include “SUN” in white on the portrait.  Applicant has thus failed to provide the required evidence of use of the mark in commerce.  See TMEP §807.12(a).

 

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

 

(1)        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 for goods include tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, and displays associated with the actual goods at their point of sale.  See TMEP §§904.03 et seq.  Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods.  TMEP §904.03(i). 

 

(2)        Submit a request to amend the filing basis to intent to use under Section 1(b), for which no specimen is required.  This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.

 

The USPTO will not accept an amended drawing submitted in response to this refusal because the changes would materially alter the drawing of the mark in the original application or as previously acceptably amended.  See 37 C.F.R. §2.72(a)-(b); TMEP §807.14.  Specifically, the portrait without the wording “SUN” creates a different commercial impression, one that cannot be verbalized.

 

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

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.  However, if applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.

 

Requirement for Clarification About Entity Type and Country of Citizenship/Organization

 

The names of at least two different individuals appear in the section of the application intended for the trademark owner’s name; however, the legal entity is set forth as a limited liability company.  Applicant must clarify this inconsistency.  See 37 C.F.R. §§2.32(a)(2), (a)(3)(i)-(ii), 2.61(b); TMEP §803.03(d), (h).

 

If these individuals are applying together as joint owners/applicants, they must amend the legal entity from “limited liability company” to “individual” and each joint applicant must indicate his or her country of citizenship.  See TMEP §803.03(d).  Alternatively, if applicant is a limited liability company, applicant must set forth its correct name and U.S. state or foreign country under whose laws it was established.  TMEP §803.03(h).

 

If, in response to the above request, applicant provides information indicating that it is not the owner of the mark, registration will be refused because the application was void as filed.  See 37 C.F.R. §2.71(d); TMEP §§803.06, 1201.02(b).  An application must be filed by the party who owns or is entitled to use the mark as of the application filing date.  See 37 C.F.R. §2.71(d); TMEP §1201.02(b).

 

Requirement for Acceptable Color Claim and Description of the  Mark

 

Applicant must clarify the colors that are being claimed as a feature of the mark.  See 37 C.F.R. §§2.37, 2.52(b)(1), 2.61(b); TMEP §§807.07(a) et seq.  The drawing shows the mark in the colors black, white, gray, beige, pink, dark blue, blue, yellow, green; however, the following colors appear in the color claim and description of the mark: dark brown and white. 

 

Where the color claim and/or description of the mark and drawing are inconsistent with one another, generally the USPTO looks to the drawing to determine what the mark is.  TMEP §807.07(a)(i)-(a)(ii), (c).  Additionally, the colors in the drawing, color claim, and description must match.  See 37 C.F.R. §2.52(b)(1); TMEP §§807.07 et seq. 

 

To clarify the colors in the mark, applicant may satisfy one of the following:

 

(1)        Submit a new color drawing that shows the mark in the colors specified in the color claim and description.  TMEP §807.07(c).  However, any other amendments to the drawing will not be accepted if they would materially alter the mark.  37 C.F.R. §2.72; see TMEP §§807.07(c), 807.14 et seq.

 

(2)        Submit an amended color claim and description that matches the colors in the drawing.  Generic color names must be used to describe the colors in the mark, e.g., red, yellow, blue.  TMEP §807.07(a)(i)-(ii).  If black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark, applicant must so specify in the description.  See TMEP §807.07(d). 

 

The following color claim and description are suggested:

 

Color claim:  The colors black, white, gray, beige, pink, dark blue, blue, yellow, green are claimed as a feature of the mark.

 

Description:  The mark consists of a square portrait of a woman with beige skin, black eyes, black hair, pink lips, white teeth, and wearing glasses outlined in black.  She is wearing a blue newsboy cap, a dark blue turtleneck stop with gray jacket.  She appears in front of an abstract background having the colors pink, black, blue, yellow, green, gray and white.  At the bottom of the square portrait is the wording “Sun” in white.

 

For more information about drawings and instructions on how to submit a new color drawing, amended color claim and/or description online using the Trademark Electronic Application System (TEAS) form, see the Drawing webpage.

 

Requirement for Acceptable Consent Statement

 

Applicant has provided statements regarding the portrait or likeness in the mark which identifies a particular individual; however, the applicant must provide acceptable wording as suggested below:

 

To register a mark that consists of or comprises a portrait or likeness of a particular living individual, an applicant must provide a written consent personally signed by the shown individual.  15 U.S.C. §1052(c); TMEP §§813, 1206.04(a).  

 

Accordingly, if the portrait or likeness in the mark does not identify a particular living individual, applicant must submit a statement to that effect (e.g., “The portrait or likeness shown in the mark does not identify a particular living individual.”). 

 

However, if the portrait or likeness in the mark does identify a particular living individual, applicant must submit both of the following: 

 

(1)        The following statement:  The portrait(s) or likeness(es) shown in the mark identifies a living individual(s) whose consent(s) to register is made of record. 

 

(2)        A written consent, personally signed by the pictured individual(s), as follows:  “I, Suntharee Balthazor, consent to the use and registration of my likeness as a trademark and/or service mark with the USPTO.”

 

For an overview of the requirements pertaining to portraits or likenesses appearing in marks, and instructions on how to satisfy this requirement online using the Trademark Electronic Application System (TEAS) response form, please go to http://www.gov.uspto.report/trademarks/law/consent.jsp.

 

Failure to comply with a request for information is grounds for refusing registration.  In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814. 

 

requirement for information – Concurrent Use Statement

 

Applicant claimed concurrent use in the application without stating the reason or basis for this claim; thus, it is unclear whether applicant intended to submit this claim.  Accordingly, applicant must clarify whether he or she inadvertently included the concurrent use claim in the application.  See 37 C.F.R. §2.61(b); TMEP §814.  A concurrent use claim is asserted by applicants who want to restrict the use of their mark to a limited geographic area only (instead of use for the entire country), and must identify other parties who are using the same mark in different geographic areas.    

 

Applicant may respond to this issue by either (1) requesting that the concurrent use claim be deleted from the application or (2) keeping the claim and providing the legal basis for it, as explained in the following paragraph.  See TMEP §1207.04(c)-(d)(i). 

 

To claim concurrent use in an application, applicant must base the claim on at least one of the following reasons:  (1) a court decree, (2) a consent from a trademark registration owner to applicant’s concurrent use and registration, or (3) prior use of the mark by applicant as compared to the application filing dates of other parties or users.  TMEP §1207.04(c); see 15 U.S.C. §1052(d).  If applicant asserts a proper concurrent use claim, the application will be subject to an administrative proceeding (similar to a court proceeding) before the USPTO Trademark Trial and Appeal Board to determine the geographical limitations on applicant’s and other parties’ use of the mark.  See 37 C.F.R. §2.99(h); TMEP §1207.04(e). 

 

Failure to comply with a request for information is grounds for refusing registration.  In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814. 

 

APPOINTMENT OF A TRADEMARK ATTORNEY – ADVISORY:

 

Because of the legal technicalities and strict deadlines of the trademark application process, applicant may wish to hire a private attorney who specializes in trademark matters to assist in the 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.

 

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.  

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

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

 

 

 

/Jeanie H. Lee/

Examining Attorney

Law Office 105

571-272-6110

jeanie.lee@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 October 15, 2019 for

U.S. Trademark Application Serial No. 88528464

 

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. 

 

 

/Jeanie H. Lee/

Examining Attorney

Law Office 105

571-272-6110

jeanie.lee@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 October 15, 2019, 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.”