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:  February 07, 2020

 

This letter is in response to applicant’s communication filed December 13, 2019.  The translation of the mark is noted.  The requirement for an acceptable specimen of use is maintained.

 

SUMMARY OF ISSUES:

 

• Multiple Marks on Specimen of Use
• Color Claim and Color Location Statement

 

MULTIPLE MARKS ON SPECIMEN OF USE

 

Registration is refused because applicant seeks registration of more than one mark.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §2.52; TMEP §807.01.  An applicant may apply for only one mark in a single application.  37 C.F.R. §2.52; TMEP §807.01; see, e.g., In re Int’l Flavors & Fragrances Inc., 183 F.3d 1361, 1366, 51 USPQ2d 1513, 1516 (Fed. Cir. 1999); In re Hayes, 62 USPQ2d 1443, 1445-46 (TTAB 2002).  A mark combining separate elements is registrable only if it is a single unitary mark engendering a unique and distinct commercial impression.  In re Supreme Steel Framing Sys. Ass’n Inc., 105 USPQ2d 1385, 1387 (TTAB 2012) (citing In re Walker-Home Petroleum, Inc., 229 USPQ 773, 775 (TTAB 1985)).

 

In this case, the application drawing shows the following 2 elements:  A square containing the stylized wording MECHA; and the stylized word MECHA.  However, the substitute specimen shows these elements spatially separated to such a degree that they each appear as separate and distinct marks.

 

Applicant may not delete one or more of these separate elements because doing so would materially alter the commercial impression of the mark as originally filed.  See 37 C.F.R. §2.72(a)(2); TMEP §§807.12(a), 807.14 et seq. 

 

Moreover, the original specimens were also not acceptable.

 

Applicant may respond to this refusal by submitting the following:

 

(1)             A substitute specimen showing the entire mark on the drawing in use in commerce for each class of goods and/or services; and

 

(2)       The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “The substitute specimen was in use in commerce at least as early as the filing date of the application.”  See 37 C.F.R. §§2.59(a), 2.193(e)(1); TMEP §904.05.  If submitting a specimen requires an amendment to the dates of use, applicant must also verify the amended dates.  37 C.F.R. §2.71(c); TMEP §904.05.

 

Alternatively, applicant may respond by submitting an amendment to the application from a use in commerce basis under Trademark Act Section 1(a) to an intent to use basis under Section 1(b), and the refusal will be withdrawn.  See TMEP §806.03(c).  However, if applicant amends the basis to Section 1(b), registration will not be granted until applicant later amends the application back to use in commerce by filing an acceptable allegation of use with a proper specimen showing one mark.  See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103.  If the same specimen is submitted with an allegation of use, the same refusal will likely issue.

 

To amend to Section 1(b), applicant must submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “Applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods and/or services listed in the application as of the filing date of the application.”  37 C.F.R. §2.34(a)(2); TMEP §806.01(b); see 15 U.S.C. §1051(b); 37 C.F.R. §§2.35(b)(1), 2.193(e)(1).

 

COLOR CLAIM AND COLOR LOCATION STATEMENT

 

Applicant must submit an amended color claim and also provide a description of the mark that matches the colors in the drawing of the mark.  See 37 C.F.R. §2.52(b)(1); TMEP §807.07(c).  The drawing shows the mark in the colors orange and white; however, the following colors appear in the color claim:  blue, orange, black 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 of the mark, color claim, and description must match.  See 37 C.F.R. §2.52(b)(1); TMEP §§807.07 et seq. 

 

Applicant may not amend the mark in the drawing to match the color claim because this would constitute a material alteration of the mark.  See 37 C.F.R. §2.72; TMEP §§807.07(c), 807.14 et seq. 

 

The amended color claim and mark description must specify all the colors in the drawing of the mark, using generic color names, 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 mark description are suggested, if accurate:

 

Color claim:  “The colors orange and white are claimed as a feature of the mark.”

 

Description:  “The mark consists of the stylized word MECHA in the color orange with a square outlined in the color orange and containing the stylized wording MECHA in the color orange.  The color white appears inside the square.”

 

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

 

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. 

 

If applicant has questions about this Office action, please telephone the assigned trademark examining attorney. 

 

 

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.    

 

 

.

/Evelyn Bradley/

Evelyn Bradley

Trademark Examiner

Law Office 104

(571) 272-9292

 

 

 

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 February 07, 2020 for

U.S. Trademark Application Serial No. 88588435

 

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. 

 

 

.

/Evelyn Bradley/

Evelyn Bradley

Trademark Examiner

Law Office 104

(571) 272-9292

 

 

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 February 07, 2020, 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.”