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:  December 18, 2019

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issues 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 THE ISSUES:

 

-       Applicant Must Identify Declaration Signatory

-       Applicant Must Be Represented by an Actual U.S.-Licensed Attorney

-       Registration Symbol – Advisory

 

APPLICANT MUST IDENTIFY DECLARATION SIGNATORY

 

The signatory in the application is identified as “NNXMA HDB”; however, this is unacceptable because “NNXMA HDB” is not an actual name and does not indicate the name of the person signing the application.  See 37 C.F.R. §2.193; TMEP § 611.01(b), 804.04. 

 

A signatory must personally sign his or her name. 37 C.F.R. §§2.193(a)(1), (c)(1). Moreover, the name of the person who signs a document submitted in connection with an application must be set forth in printed or typed form immediately below or adjacent to the signature,or identified elsewhere in the filing (e.g., in a cover letter or other document that accompanies the filing). 37 C.F.R. §2.193(d). If the signatory’s name is not set forth in a document, the USPTO may require that it be stated for the record. In addition, when signing an application, a signatory should set forth his or her title or state the relationship between the applicant and the person who signed the verification. See TMEP §804.04.

 

Therefore, applicant must state for the record the full legal name of the individual who signed the declaration supporting the application.  Applicant must also confirm the signatory’s position and/or title. See TMEP § 804.04.  If applicant is unable to provide this information, or if the signatory did not have authority to bind the applicant, applicant must submit a new affidavit or signed declaration under 37 C.F.R. §2.20 which verifies the facts of the application.  See 37 C.F.R. §§2.193(e)(1)–2.193(e)(1)(iii), 2.2(n), 2.33(a)-(b)(1), (c), 2.34(a)(1)(i); TMEP §804.  In such instance, the following statements must be verified:

 

That applicant believes applicant is the owner of the mark; that the mark is in use in commerce and was in use in commerce as of the application filing date; that to the best of the signatory’s knowledge and belief, no other persons, except, if applicable, concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services of such other persons, to cause confusion or mistake, or to deceive; that the specimen shows the mark as used on or in connection with the goods or services as of the application filing date; and that the facts set forth in the application are true.  37 C.F.R. §§2.33(b)(1), (c), 2.34(a)(1)(i), 2.59(a).  For more information about this, see the Verified statement webpage.

 

To provide these verified statements.  After opening the correct TEAS response form, answer “yes” to wizard question #10, and follow the instructions within the form for signing.  In this case, the form will require two signatures:  one in the “Declaration Signature” section and one in the “Response Signature” section.

 

APPLICANT MUST BE REPRESENTED BY AN ACTUAL U.S.-LICENSED ATTORNEY

 

Applicant must be represented by a U.S.-licensed attorney.  An applicant whose domicile is located outside of the United States or its territories is foreign-domiciled and must be represented at the USPTO by an attorney who is an active member in good standing of the bar of the highest court of a U.S. state or territory.  37 C.F.R. §§2.11(a), 11.14; Requirement of U.S.-Licensed Attorney for Foreign-Domiciled Trademark Applicants & Registrants, Examination Guide 4-19, at I.A. (Rev. Sept. 2019).  An individual applicant’s domicile is the place a person resides and intends to be the person’s principal home.  37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A.  A juristic entity’s domicile is the principal place of business; i.e., headquarters, where a juristic entity applicant’s senior executives or officers ordinarily direct and control the entity’s activities.  37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A.  Because applicant is foreign-domiciled, applicant must appoint such a U.S.-licensed attorney qualified to practice under 37 C.F.R. §11.14 as its representative before the application may proceed to registration.  37 C.F.R. §2.11(a).  See Hiring a U.S.-licensed trademark attorney for more information. 

 

Applicant has provided attorney information that appears to be invalid because it does not identify an individual qualified to practice before the USPTO under 37 C.F.R. §11.14.  See 37 C.F.R. §2.17(a).  Specifically, the application record lists applicant’s attorney as NNXMA HDB, which merely identifies nonsensical text.  Because the name listed in the application record does not appear to be that of a qualified practitioner, the USPTO has removed any related correspondence information that includes this name and is issuing this Office action directly to applicant at the address in the initial application.  See 37 C.F.R. §2.18(a)(5); TMEP §609.01.

 

Applicant must appoint a U.S.-licensed attorney as its representative before the application may proceed to registration.  37 C.F.R. §§2.2(o), 2.11(a).  See Hiring a U.S.-licensed trademark attorney for more information.

 

To appoint a U.S.-licensed attorney.  To appoint an attorney, applicant should submit a completed Trademark Electronic Application System (TEAS) Revocation, Appointment, and/or Change of Address of Attorney/Domestic Representative form.  The newly-appointed attorney must submit a TEAS Response to Examining Attorney Office Action form indicating that an appointment of attorney has been made and address all other refusals or requirements in this action, if any.  Alternatively, if applicant retains an attorney before filing the response, 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).

 

Failure to comply with this requirement is grounds for refusing registration.  In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.  Merely stating that the attorney’s bar information is available on a state bar’s website is an insufficient response and will not make the relevant information of record.  See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).  Applicant also is advised that providing false statements or documentation concerning applicant’s domicile address or in response to this request for documentation 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).

 

REGISTRATION SYMBOL – ADVISORY

 

The specimen shows use of the federal registration symbol ® with the applied-for mark.  However, the USPTO records do not show that the mark is registered.  Applicant may not use the federal registration symbol until its mark is registered in the USPTO.  TMEP §§906, 906.03.  After registration, applicant may use this symbol in connection with the specific goods listed in the registration.  Id.

 

This information is advisory only.  Applicant need not respond to this issue.

 

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.    

 

 

/Xheneta Ademi/

Xheneta Ademi

Trademark Attorney

Law Office 130/Innovation Lab

571-272-7151

xheneta.ademi@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 December 18, 2019 for

U.S. Trademark Application Serial No. 88606637

 

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. 

 

 

/Xheneta Ademi/

Xheneta Ademi

Trademark Attorney

Law Office 130/Innovation Lab

571-272-7151

xheneta.ademi@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 December 18, 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.”