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:  August 08, 2019

 

 

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.  

 

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.

 

No Likelihood of Confusion

 

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).

 

Goods

 

The identification of goods is partially indefinite and must be clarified because the applicant must remove the punctuation after “cleaning brushes”.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

Applicant may adopt the following identification, if accurate:

 

Baking mats; Bottle openers; Canister sets; Containers for household or kitchen use; Dinnerware; Dishwashing brushes; Drain stoppers for sinks and drains; Drinking bottles for sports; Fitted vanity cases; Hand-operated coffee grinders and pepper mills; Lunch boxes made of plastic; Napkin holders; Shower caddies; Toilet paper holders; Caddies for holding cosmetics, cleaning brushes for household use; Cleaning brushes for household use; Insulated bags for food or beverage for domestic use; Rails and rings for towels; Sponge holders.  International Class 21.

 

Description of the Mark

 

Applicant must submit an amended description of the mark that agrees with the mark on the drawing.  37 C.F.R. §2.37; see TMEP §§808.01, 808.02.  The current description is inconsistent with the mark on the drawing and thus is inaccurate.  37 C.F.R. §2.37; see TMEP §§808.01, 808.02.  Descriptions must be accurate and identify only those literal and design elements appearing in the mark.  See 37 C.F.R. §2.37; TMEP §§808.02, 808.03(d). 

 

The following description is suggested, if accurate:  The mark consists of a geometric star design above the stylized wording SWEMOX.

 

 

Pro Se Applicant and U.S. Counsel Requirements

 

Applicant must be represented by a U.S.-licensed attorney.  The application record indicates that applicant’s domicile is outside of the United States in China, but no attorney who is an active member in good standing of the bar of the highest court of a U.S. State or territory has been appointed to represent the applicant in this matter.  All applicants whose permanent legal residence or principal place of business is not within the United States or its territories must be represented by a U.S.-licensed attorney at the USPTO.  37 C.F.R. §§2.2(o), 2.11(a).  Thus, applicant is required to be represented by a U.S.-licensed attorney and must appoint one.  37 C.F.R. §2.11(a).  This application will not proceed to registration without such appointment and representation.  See id.  See Hiring a U.S.-licensed trademark attorney for more information.

 

To appoint or designate a U.S.-licensed attorney.  To appoint an attorney, applicant should (1) submit a completed Trademark Electronic Application System (TEAS) Revocation, Appointment, and/or Change of Address of Attorney/Domestic Representative form and (2) promptly notify the trademark examining attorney that this TEAS form was submitted.  Alternatively, if applicant has already retained an attorney, the attorney can respond to this Office action by using the appropriate TEAS response form and provide his or her attorney information in the form and sign it as applicant’s attorney.  See 37 C.F.R. §2.17(b)(1)(ii).

 

Applicant must provide additional information and documentation about his or her domicile.  To permit proper examination of the application as to whether the address provided in the application is applicant’s domicile and applicant is subject to the requirement under 37 C.F.R. §2.11(a) to be represented by a U.S.-licensed attorney, applicant must provide the additional information and documentation below.  See 37 C.F.R. §§2.11(b), 2.61(b), 2.189; TMEP §814. 

 

An applicant’s domicile address is an application requirement and also dictates whether an applicant is required to have an attorney who is an active member in good standing of the bar of the highest court of a U.S. state or territory represent them at the USPTO.  See 37 C.F.R. §§2.11(a), 2.22(a)(1), 2.32(a)(2), 2.189.  An applicant whose permanent legal residence or principal place of business is not within the United States or its territories must be represented by a U.S.-licensed attorney at the USPTO.  37 C.F.R. §§2.2(o)-(p), 2.11(a).  Foreign citizens must comply with U.S. visa immigration laws to claim the United States as their permanent legal residence. 

 

In this case, it is unclear from the application record whether the U.S. street address provided is actually the address of applicant’s permanent legal residence.  Applicant must therefore provide all of the following:

 

(1)       An explanation of the basis for claiming that the United States address provided in the “Owner Information” section of the application is applicant’s lawful permanent residence (if an individual) or business headquarters (if a juristic entity).  For example, if applicant is an individual who is a foreign citizen, applicant may state that he or she has a valid form I-551 that admits applicant to live in the United States as a permanent resident, and provide the dates of issuance and expiration of the I-551.  A juristic entity may state that it is an entity actively registered in a specific U.S. state or territory at the designated address, as established by documentation submitted from the relevant office or agent of that state or territory.

 

(2)       Documentation showing that the address in the application is applicant’s address of residence (for an individual) or business headquarters (for a juristic entity), such as:

(i) a valid signed rental, lease, or mortgage agreement dated within one year of the application filing date;

(ii) a valid homeowner’s, renter’s, or motor vehicle insurance policy dated within one year of the application filing date;

(iii) a computer generated bill issued by a utility company dated within 60 days of the application filing date; or

(iv) change-of-address confirmation from the U.S. Postal Service showing applicant’s prior and current address (Form CNL107). 

 

Submitted documentation must show the name and address of the residence or business and the date of the document but should redact other personal and financial information. 

 

Requirement of U.S. Licensed Attorney for Foreign Trademark Applicants & Registrants, Examination Guide 4-19, at I.A.3 (Aug. 2019); see 37 C.F.R. §§2.11(b), 2.61(b), 2.189. 

 

If the U.S. street address of record is not applicant’s correct or current domicile address, applicant must provide his or her correct and current permanent legal place of residence address.  See 37 C.F.R. §§2.11(b), 2.61(b), 2.189.  If applicant provides a different U.S. street address as his or her domicile address, applicant must provide the same information and documentation requested above.

 

Failure to comply with this request for information is grounds for refusing registration.  In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.  Applicant also is advised that providing false statements or documentation concerning applicant’s domicile address or in response to this request for information is deemed submitting a paper for an improper purpose in violation of 37 C.F.R. §11.18(b), and subject to the sanctions and actions provided in 37 C.F.R. §11.18(c).  See 37 C.F.R. §2.11(e).

 

To provide the explanatory statement and documentation supporting applicant’s domicile.  Open the correct TEAS response form and enter the serial number, answer “yes” to wizard question #3, and on the “Additional Statement(s)” page in the “Miscellaneous Statement” field (1) provide in the text box a statement explaining the basis for applicant’s claim that the listed address is applicant’s physical domicile address; and (2) click the button below the text box to attach evidence showing the U.S. address is applicant’s domicile. 

 

If the listed address is not applicant’s correct or current domicile, provide applicant’s physical domicile address by opening the correct TEAS response form, answering “yes” to wizard question #5, and providing applicant’s physical domicile address on the “Owner Information” page.  If applicant provides a different U.S. street address, applicant will need to follow the directions for providing the additional information and documentation requested above.

 

Applicant must be represented by a U.S.-licensed attorney because it is not clear that applicant’s current address supports domicile in the United States.  Applicants domiciled outside the United States must be represented by a U.S.-licensed attorney at the USPTO.  37 C.F.R. §2.11(a).  This application will not proceed to registration without such appointment and representation.  See 37 C.F.R. §§2.2(o), 2.11(a).  See Hiring a U.S.-licensed trademark attorney for more information.  If applicant can establish domicile in the United States, this requirement may be withdrawn.

 

To appoint or designate a U.S.-licensed attorney.  To appoint an attorney, applicant should (1) submit a completed Trademark Electronic Application System (TEAS) Revocation, Appointment, and/or Change of Address of Attorney/Domestic Representative form and (2) promptly notify the trademark examining attorney that this TEAS form was submitted.  Alternatively, if applicant has already retained an attorney, the attorney can respond to this Office action by using the appropriate TEAS response form and provide his or her attorney information in the form and sign it as applicant’s attorney.  See 37 C.F.R. §2.17(b)(1)(ii).

 

 

If the applicant has any questions or needs assistance in responding to this Office action, please call or e-mail the assigned examining attorney.

 

 

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

 

 

/D. Beryl Gardner/

Trademark Examining Attorney

Law Office 117

571-272-9162 (O)

571-273-9162 (F)

beryl.gardner@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 August 08, 2019 for

U.S. Trademark Application Serial No. 88532408

 

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. 

 

 

/D. Beryl Gardner/

Trademark Examining Attorney

Law Office 117

571-272-9162 (O)

571-273-9162 (F)

beryl.gardner@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 August 08, 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.”