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:  November 06, 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.

 

 

SUMMARY OF ISSUES:

• Section 2(d) Refusal – Likelihood of Confusion
• Prior-Filed Applications – Potentially Conflicting Marks
• Specimen Refusal – Matching & Use
• Significance of Wording – Required
• Identification of Goods & Services – Amendment Required

 

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration Nos. 3877663 and 2707021.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

Applicant’s mark is CIRA presented in standard character form, for use with the following applied-for goods and services (note duplicate entries do not appear below):

 

Class 009: Chatbot software for customer support for business; Chatbot software using artificial intelligence for customer engagement for businesses; Computer chatbot software for simulating conversations; Downloadable cloud-based software for automation of business processes; Humanoid robots with artificial intelligence

 

Class 042: Advanced product research in the field of artificial intelligence; Design and development of computer software for chatbot creation and deployment; Intelligent natural language understanding services using cloud-based software technology; Intelligent voice recognition services using cloud-based software technology

 

The registered marks consist of the following:

 

·       U.S. Reg. No. 3877663 XCIRA presented in standard character form, for use with the following registered goods and services related to this refusal:

 

Class 009: Computer software for creating, operating and managing auctions and for conducting transactions via internet auctions; computer hardware and software system for tracking assets and reporting the condition of the assets

 

Class 042: Technology-based auction-related services provided to others using the Internet, namely, software development for use in inspecting, evaluating, data capture and recording the condition of tangible assets; design, development and implementation of auctioneering softawre

 

·       U.S. Reg. No. 2707021 CIRACOM presented in typed form, for use with the following registered services related to this refusal:

 

Class 042: Computer services, namely, creation and maintenance of computer software for others; consulting and design services in the field of information technology;

 

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/or 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/or 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.

 

Further, the overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer.  See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993).  Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant.  TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).

 

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).

 

Here, applicant’s applied-for mark is CIRA presented in standard character form, and the registered marks are XCIRA presented in standard character form (U.S. Reg. No. 3877663) and CIRACOM presented in typed form (U.S. Reg. No. 2707021).

 

In this case, applicant’s and registrant’s mark all share the term “CIRA”. Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression.  See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii).

 

Likewise, applicant’s mark is entirely incorporated into the registered marks. Incorporating the entirety of one mark within another does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d).  See Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 1022, 194 USPQ 419, 422 (C.C.P.A. 1977) (finding CALIFORNIA CONCEPT and surfer design and CONCEPT confusingly similar); Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL LANCER and design and BENGAL confusingly similar); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (finding BARR GROUP and BARR confusingly similar); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1090 (TTAB 2016) (finding JAWS DEVOUR YOUR HUNGER and JAWS confusingly similar); TMEP §1207.01(b)(iii).  In the present case, the marks are identical in part.

 

Accordingly, applicant’s and registrant’s CIRA marks are considered similar for purposes of determining likelihood of confusion under Section 2(d) of the Trademark Act.

 

Comparison of Goods/Services

 

The goods and/or services are compared to determine whether they are similar, commercially related, or travel in the same trade channels.  See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).

 

Further, the compared goods and/or 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).

 

Here, applicant’s applied-for goods and services consist of “Chatbot software for customer support for business; Chatbot software using artificial intelligence for customer engagement for businesses; Computer chatbot software for simulating conversations; Downloadable cloud-based software for automation of business processes; Humanoid robots with artificial intelligence” in Class 009 and “Advanced product research in the field of artificial intelligence; Design and development of computer software for chatbot creation and deployment; Intelligent natural language understanding services using cloud-based software technology; Intelligent voice recognition services using cloud-based software technology” in Class 042.

 

Regarding U.S. Reg. No. 3877663 XCIRA:

 

In this case, the registered goods and services consist of “Computer software for creating, operating and managing auctions and for conducting transactions via internet auctions; computer hardware and software system for tracking assets and reporting the condition of the assets” in Class 009 and “Technology-based auction-related services provided to others using the Internet, namely, software development for use in inspecting, evaluating, data capture and recording the condition of tangible assets; design, development and implementation of auctioneering software” in Class 042.

 

Here, applicant’s software is broad in its function “for customer engagement for business”, “for simulating conversations” “for automation of business” in Class 009 and “Intelligent natural language understanding services using cloud-based software technology; Intelligent voice recognition services using cloud-based software technology that this software” that could encompass registrant’s software that is used for “transactions” for internet auctions, and “tracking assets”. When software is identified broadly without restriction or limitation as to the purpose or function, the software is presumed to encompass all goods of that type, including the same type of software as registrant.  See In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); In re N.A.D., Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1207.01(a)(iii).

 

Likewise, applicant’s “design and development of computer software for chatbot creation and deployment” could encompass registrant’s design and development of “auctioneering software” and “software development” regarding “tangible assets” of registrant. Indeed, applicant’s design and development only indicates chatbot type of software, which could be used or deployed in any type of software or field of use, including that of registrant’s auctioneering software, which could include chatbot functions. See id.

 

Regarding U.S. Reg. No. 2707021 CIRACOM

 

In this case, registrant’s services related to this refusal are “Computer services, namely, creation and maintenance of computer software for others; consulting and design services in the field of information technology” in Class 042.

 

Here, registrant use(s) broad wording to describe creation of software for others and consulting and design in the field of IT, which presumably encompasses all goods and/or services of the type described, including applicant’s more narrow “chatbot” and “artificial intelligence” software and design services.  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 services 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 and/or services 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 and/or services are related.

 

Accordingly, applicant’s and registrants software goods and services are related for purposes of determining likelihood of confusion under Section 2(d) of the Trademark Act.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

 

If applicant responds to this issue, applicant must also respond to the issue(s) discussed below.

 

 

PRIOR-FILED APPLICATIONS – POTENTIALLY CONFLICTING MARKS

 

In addition to the cited marks discussed above, the filing dates of pending U.S. Application Serial Nos. 87528132 CIRA, 88257509 CIRACONNECT, 88257517 CIRAMAIL, 88257530 CIRABOOKS, 87528125 CIRA HEALTH SOLUTIONS precede applicant’s filing date.  See attached referenced applications.  If one or more of the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s).  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced applications.

 

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 marks in the referenced applications.  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.

 

If applicant responds to these issue(s), applicant must also respond to the issue(s) discussed below.

 

 

SPECIMEN REFUSAL – MATCHING & USE

 

Registration is refused because the specimen does not show the mark in the drawing in use in commerce in International Class(es) 009 & 042, 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 specimen displays the mark as CIRA CREATOR.  However, the drawing displays the mark as CIRA.  The mark on the specimen does not match the mark in the drawing because the specimen on the digitized computer screen adds the addition wording if “creator”.  Applicant has thus failed to provide the required evidence of use of the mark in commerce.  See TMEP §807.12(a).

 

Likewise, even if the mark matched, which, it does not, the applied-for goods and services are not displayed in the specimen. Specifically, Class 009 goods of software are all “downloadable” or “recorded” software and nowhere on the specimens, does any of the software appear downloadable. Instead, the specimens give reference to “open platform” software and shows software on a screen that does not appear to be downloadable.

 

Further, the specimens do not demonstrate that the mark is use with any of the applied-for class 042 services of “advanced product research in the field of artificial intelligence; Design and development of computer software for chatbot creation and deployment; Intelligent natural language understanding services using cloud-based software technology; Intelligent voice recognition services using cloud-based software technology.” Instead, the mark appears on the specimen with a “cognitive assistant” software. Thus, in addition to the matching issue, the specimens do not show use of the applied-for mark with any of the applied-for goods in Class 009 of applied-for services in Class 042.

 

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).  Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and webpages that show the mark used in the actual sale, rendering, or advertising of the services.  See TMEP §1301.04(a), (h)(iv)(C).

 

(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 additional term of “CREATOR” was not a searched term in the USPTO database of marks. Likewise, the term adds an additional meaning to the term “CIRA”, namely that the software is used by the consumer to “create” their own product. Thus, the applied-for mark does not match the mark appearing on the specimen.

 

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.

 

If applicant responds to these issue(s), applicant must also respond to the issue(s) discussed below.

 

 

SIGNIFICANCE OF WORDING – REQUIRED

 

To permit proper examination of the application, applicant must explain whether the letters in the mark “CIRA” have any significance in the software, technology, artificial intelligence, or chatbot trade or industry or as applied to applicant’s goods and/or services, or if such letters represent a “term of art” within applicant’s industry.  See 37 C.F.R. §2.61(b); TMEP §814.  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.

 

If applicant responds to these issue(s), applicant must also respond to the issue(s) discussed below.

 

 

IDENTIFICATION OF GOODS & SERVICES – AMENDMENT REQUIRED

 

Applicant’s applied-for goods and services consist of the following:

 

Class 009: Chatbot software for customer support for business; Chatbot software using artificial intelligence for customer engagement for businesses; Computer chatbot software for simulating conversations; Downloadable cloud-based software for automation of business processes; Humanoid robots with artificial intelligence; Chatbot software for customer support for business; Chatbot software using artificial intelligence for customer engagement for businesses; Computer chatbot software for simulating conversations; Downloadable cloud-based software for automation of business processes; Humanoid robots with artificial intelligence

 

Class 042: Advanced product research in the field of artificial intelligence; Design and development of computer software for chatbot creation and deployment; Intelligent natural language understanding services using cloud-based software technology; Intelligent voice recognition services using cloud-based software technology; Advanced product research in the field of artificial intelligence; Design and development of computer software for chatbot creation and deployment; Intelligent natural language understanding services using cloud-based software technology; Intelligent voice recognition services using cloud-based software technology

 

The wording highlighted in bold above must be clarified for the reasons discussed below.

 

First, the wording “Chatbot software for customer support for business; Chatbot software using artificial intelligence for customer engagement for businesses; Computer chatbot software for simulating conversations” in the identification in International Class 009 is indefinite and too broad and must be clarified to specify whether the format is downloadable, recorded, or online non-downloadable.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a).  Downloadable and recorded goods are in International Class 009, whereas providing their temporary, online non-downloadable use or “platform as a service (PAAS) services featuring computer software platforms” are in International Class 042.  See TMEP §1402.03(d).

 

Likewise, the wording “Chatbot software for customer support for business; Chatbot software using artificial intelligence for customer engagement for businesses; Computer chatbot software for simulating conversations; Downloadable cloud-based software for automation of business processes; Humanoid robots with artificial intelligence” in Class 009 and “Advanced product research in the field of artificial intelligence; Design and development of computer software for chatbot creation and deployment; Intelligent natural language understanding services using cloud-based software technology; Intelligent voice recognition services using cloud-based software technology” in Class 042 are duplicate entries.

 

Applicant is advised to delete or modify the duplicate entry in the identification of goods and/or services. See generally TMEP §§1402.01, 1402.01(a).  If applicant does not respond to this issue, be advised that the USPTO will remove duplicate entries from the identification prior to registration. If modifying one of the duplicate entries, applicant may amend it to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Also, generally, any deleted goods and/or services may not later be reinserted.  TMEP §1402.07(e).

 

Applicant may adopt the following suggestions appearing in bold below, with deletions in strikethrough and additional examination notes appearing in italics and within {curly brackets}, if accurate:

 

Class 009: downloadable chatbot software for customer support for business; downloadable chatbot software using artificial intelligence for customer engagement for businesses; downloadable computer chatbot software for simulating conversations; Downloadable cloud-based software for automation of business processes; Humanoid robots with artificial intelligence; Chatbot software for customer support for business; Chatbot software using artificial intelligence for customer engagement for businesses; Computer chatbot software for simulating conversations; Downloadable cloud-based software for automation of business processes; Humanoid robots with artificial intelligence {DELETE ALL DUPLICATE ENTRIES}

 

Class 042: Advanced product research in the field of artificial intelligence; Design and development of computer software for chatbot creation and deployment; Intelligent natural language understanding services using cloud-based software technology; Intelligent voice recognition services using cloud-based software technology; Advanced product research in the field of artificial intelligence; Design and development of computer software for chatbot creation and deployment; Intelligent natural language understanding services using cloud-based software technology; Intelligent voice recognition services using cloud-based software technology {DELETE ALL DUPLICATE ENTRIES}; platform as a service (PAAS) featuring computer chatbot software platforms for customer support for business; platform as a service (PAAS) featuring computer chatbot software platforms using artificial intelligence for customer engagement for businesses; platform as a service (PAAS) featuring computer chatbot software platforms for simulating conversations;

 

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).

 

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.

 

RESPONSE GUIDELINES

 

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. 

 

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  

 

 

/Courtney M. Caliendo/

Courtney M. Caliendo

Trademark Examining Attorney

Law Office 121 - USPTO

Courtney.Caliendo@uspto.gov

571-270-1871

 

 

 

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 November 06, 2019 for

U.S. Trademark Application Serial No. 88565514

 

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. 

 

 

/Courtney M. Caliendo/

Courtney M. Caliendo

Trademark Examining Attorney

Law Office 121 - USPTO

Courtney.Caliendo@uspto.gov

571-270-1871

 

 

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 November 06, 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.”