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:  January 16, 2020

 

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 USPTO’s database of registered and pending marks and has found no similar registered marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).  However, marks in prior-filed pending applications may present a bar to registration of applicant’s mark.

 

Summary of Issues:

• Advisory: Marks in Prior Pending Applications May Present a Potential Bar to Registration
• Section 2(e)(1) Refusal – Mark is Merely Descriptive
• Amendment to Identification of Goods/Services Required
• Advisory: Multiple Classes
• Section 44 Application with Intent to Perfect – Foreign Registration Required
• Clarification Regarding Legal Entity of Record

 

 

Advisory: Marks in Prior Pending Applications May Present a Potential Bar to Registration

 

The effective filing dates of pending U.S. Application Serial Nos. 88460896 and 87766917 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.

 

Section 2(e)(1) Refusal – Mark is Merely Descriptive

 

Registration is refused because the applied-for mark merely describes a characteristic or feature of applicant’s goods and/or services.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.

 

A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s goods and/or services.  TMEP §1209.01(b); see, e.g., In re TriVita, Inc., 783 F.3d 872, 874, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005) (citing Estate of P.D. Beckwith, Inc. v. Comm’r of Patents, 252 U.S. 538, 543 (1920)). 

 

Here, the applicant has applied to register “TRUSTED DIGITAL IDENTITY” for “Computer software applications, downloadable; Access control systems (Automatic); Biometric access control systems; Safety caps; Electronic entry systems; Safety nets; Cloud computing software; Interfaces for computers; Remote entry point control apparatus; Access control systems (Electric); Software; Electronic publications, downloadable”; Systemization of information into computer databases; Computerised business information processing services; Compilation of information into computer databases; Market intelligence services; Electronic data processing; Administrative processing of purchase orders; Data processing for businesses; Outsourcing services (business assistance); Data search in computer files for others; Consultancy regarding public relations communication strategies; Collection and systematisation of information into computer databases; Computerised data processing; Advertising; Data processing; Business management services relating to electronic commerce; Updating and maintenance of data in computer databases; Computerized file management; Business management consultancy; Advisory services relating to electronic data processing”; and “Internet security consultancy; Electronic monitoring of credit card activity to detect fraud via the internet; Updating of computer software; Monitoring of computer systems for detecting unauthorized access or data breach; Research and development of new products; Installation of computer software; Outsource service providers in the field of information technology; Cloud computing; Electronic monitoring of personally identifying information to detect identity theft via the internet; Maintenance and updating of computer software; Data encryption services; Data security consultancy; Design, creation, hosting and maintenance of websites for others; Technical research; Development of new products; Information technology (IT) consultancy; Computer system design; Copying of computer software; Computer software design; Computer software consultancy; Computer security consultancy; Development of computer platforms; Electronic data storage; Software as a service (SaaS); Software development; Technological consultancy; Computer programming; Conducting technical project studies”.

 

Generally, if the individual components of a mark retain their descriptive meaning in relation to the goods and/or services, the combination results in a composite mark that is itself descriptive and not registrable.  In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1516 (TTAB 2016) (citing In re Tower Tech, Inc., 64 USPQ2d 1314, 1317-18 (TTAB (2002)); TMEP §1209.03(d); see, e.g., Apollo Med. Extrusion Techs., Inc. v. Med. Extrusion Techs., Inc., 123 USPQ2d 1844, 1851 (TTAB 2017) (holding MEDICAL EXTRUSION TECHNOLOGIES merely descriptive of medical extrusion goods produced by employing medical extrusion technologies); In re Cannon Safe, Inc., 116 USPQ2d 1348, 1351 (TTAB 2015) (holding SMART SERIES merely descriptive of metal gun safes); In re King Koil Licensing Co., 79 USPQ2d 1048, 1052 (TTAB 2006) (holding THE BREATHABLE MATTRESS merely descriptive of beds, mattresses, box springs, and pillows). 

 

Only where the combination of descriptive terms creates a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in relation to the goods and/or services is the combined mark registrable.  See In re Colonial Stores, Inc., 394 F.2d 549, 551, 157 USPQ 382, 384 (C.C.P.A. 1968); In re Positec Grp. Ltd., 108 USPQ2d 1161, 1162-63 (TTAB 2013).

 

In this case, both the individual components and the composite result are descriptive of applicant’s goods and/or services and do not create a unique, incongruous, or nondescriptive meaning in relation to the goods and/or services.  Specifically, the wording comprising the applied-for mark is defined below:

 

TRUSTED: to give credence to; believe; to place in the care of another person or in a situation deemed safe; entrust.

 

DIGITAL:  relating to or being a profession or activity that is performed using digital devices.

 

IDENTITY:  the condition of being a certain person or thing; information, such as an identification number, used to establish or prove a person's individuality, as in providing access to a credit account.

 

See attached definitions from the American Heritage Dictionary of the English Language.

 

Further, a form of the word “IDENTITY” is used in applicant’s identification of goods/services.  By using this word in the identification of goods/services, the applicant has recognized that it is the common commercial or generic name of these services generally understood by the average consumers in the United States.  See TMEP §1402.01.

 

Not only do the ordinary dictionary definitions show that the terms "TRUSTED", "DIGITAL", and "IDENTITY" are descriptive, but additional representative evidence demonstrates that third parties routinely use the wording “TRUSTED DIGITAL IDENTITY” to refer to the characteristic or feature of being able to believe or entrust that a certain person or thing is who/what says it is in a digital or online environment.  See attached evidence demonstrating many third parties routinely using this wording to refer to such features/characteristics of similar goods/services.

 

All of this evidence demonstrates that “TRUSTED DIGITAL IDENTITY” is used and understood by consumers to refer to the characteristic or feature of being able to believe or entrust that a certain person or thing is who/what says it is in a digital or online environment in relation to computer and digital-related goods/services.  Accordingly, the proposed mark “TRUSTED DIGITAL IDENTITY” is merely descriptive, and registration is properly refused on the Principal Register under Section 2(e)(1).

 

In addition to being merely descriptive, the applied-for mark appears to be generic in connection with the identified goods and services and, therefore, incapable of functioning as a source-identifier for applicant’s goods and services.  In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110 (Fed. Cir. 1987); In re Empire Tech. Dev. LLC, 123 USPQ2d 1544 (TTAB 2017); see TMEP §§1209.01(c) et seq., 1209.02(a).  Under these circumstances, neither an amendment to proceed under Trademark Act Section 2(f) nor an amendment to the Supplemental Register can be recommended.  See TMEP §1209.01(c).

 

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.

 

Amendment to Identification of Goods/Services Required

 

 

The wording used to describe the goods and services must be clarified because the aspects identified below in the identification are indefinite and/or overbroad.  See TMEP §1402.01.  The specific issue(s) with each entry, if any, are noted along with suggested amendments in the table below.

 

 

 

Original Wording	Issue(s)	Suggested Amendment(s)
Class 009:
Computer software applications, downloadable	This identification for software in International Class 009 is indefinite and must be clarified to specify (1) the purpose or function of the software and its content or field of use, if content- or field- specific.  Software must also specify whether its 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 9, whereas providing their temporary, online non-downloadable use is a service in International Class 42; except for non-downloadable game software provided online or for temporary use, which is classified in International Class 41.  See TMEP §§1402.03(d), 1402.11(a)(xii).   The USPTO requires such specificity in order for a trademark examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks.  See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1402.03(d).	Downloadable computer software applications for {specify the function of the software, e.g., use as a spreadsheet, word processing, etc. and, if software is content- or field-specific, the content or field of use};
Access control systems (Automatic)	This entry contains parentheses.  Generally, applicants should not use parentheses and brackets in identifications in their applications so as to avoid confusion with the USPTO’s practice of using parentheses and brackets in registrations to indicate goods and/or services that have been deleted from registrations or in an affidavit of incontestability to indicate goods and/or services not claimed.  See TMEP §1402.12.  The only exception is that parenthetical information is permitted in identifications in an application if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity or scope of the identification, e.g., “fried tofu pieces (abura-age).”  Id.   Therefore, applicant must remove the parentheses and/or brackets from the identification and incorporate any parenthetical or bracketed information into the description of the goods and/or services, or delete such wording.	Access control systems;
Biometric access control systems	Acceptable
Safety caps	Indefinite, as the nature of such goods is unclear and may identify several goods in other classes (e.g.             Plastic safety caps for medicine containers in class 021, Non-metal safety caps for T-posts for fences in class 019).  Accordingly, greater specification of such goods is required.	The examining attorney is able to provide a recommendation as the nature of applicant’s goods is particularly unclear.
Electronic entry systems	Indefinite as the nature of such goods is unclear.  This entry may refer, for example, to “electronic entry door systems comprising touch pads and security doors” or “electronic automotive keyless entry system and keyless ignition switch system for automotive vehicles comprised of a microprocessor, electronic signal receiver, and keyfob with electronic signal transponder”.  Accordingly, clarification is required.	electronic entry door systems comprising touch pads and security doors;
Safety nets	Acceptable
Cloud computing software	Indefinite/overbroad.  See above.	Downloadable cloud-computing software for {specify the function of the software used in cloud computing, e.g., deploying virtual machines to a cloud computing platform, managing virtual machines on a cloud computing platform, etc.};
Interfaces for computers	Acceptable
Remote entry point control apparatus	Indefinite as the nature of such goods is unclear.  This entry may refer, for example, to “remote control apparatus for providing remote entry to buildings” if accurate, among other goods.   Accordingly, clarification is required.	remote control apparatus for providing remote entry to buildings;
Access control systems (Electric)	Indefinite.  See above.	Electronic access control systems;
Software	Indefinite/overbroad.  See above.	Downloadable software for {specify the function of the software, e.g., use as a spreadsheet, word processing, etc. and, if software is content- or field-specific, the content or field of use};
Electronic publications, downloadable	This identification for “publications” in International Class 009 is indefinite.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03, 1402.03(e), 1402.11(a)(x).  Specifically, applicant must the identification to provide the additional information specified below for such goods and services.     Applicant must specify the literary subject matter of (1) the common name of the type of publications, such as brochures, newsletters, or magazines; and (2) the subject matter of the publications.  See TMEP §§1402.07(b), 1402.11(a)(x).    If the subject matter is not a significant aspect of the publications, the identification may specify the general character or type of the publications (e.g., downloadable electronic publications in the nature of general feature magazines are acceptable in International Class 9).  See id.   The following are examples of acceptable formats for identifications for downloadable electronic publications:     Downloadable electronic publications in the nature of {indicate specific nature of publications, e.g., newsletters, journals, books} in the field of {indicate subject matter} in International Class 9;	Downloadable electronic publications in the nature of {indicate specific nature of publications, e.g., newsletters, journals, books} in the field of {indicate subject matter};
Class 035:
Systemization of information into computer databases	Acceptable
Computerised business information processing services	Indefinite and possibly overbroad, as the wording “processing” makes the nature of such services unclear, and may encompass services in other classes, including storage in class 039.  Applicant may amend as “Providing information in the field of business via computers”;	Providing information in the field of business via computers;
Compilation of information into computer databases	Acceptable
Market intelligence services	Acceptable
Electronic data processing	Acceptable
Administrative processing of purchase orders	Acceptable
Data processing for businesses	Acceptable
Outsourcing services (business assistance)	Indefinite – see above.	Outsourcing services;
Data search in computer files for others	Indefinite, as the nature of such services is unclear and may possibly encompass goods and services in a number of classes.  Accordingly, greater specificity of such services is required.	The examining attorney is able to provide a recommendation as the nature of applicant’s services is particularly unclear.
Consultancy regarding public relations communication strategies	Acceptable
Collection and systematisation of information into computer databases	Acceptable
Computerised data processing	Acceptable
Advertising	Acceptable
Data processing	Acceptable
Business management services relating to electronic commerce	Acceptable
Updating and maintenance of data in computer databases	Acceptable
Computerized file management	Acceptable
Business management consultancy	Acceptable
Advisory services relating to electronic data processing	Acceptable
Class 042:
Internet security consultancy	Acceptable
Electronic monitoring of credit card activity to detect fraud via the internet	Acceptable
Updating of computer software	Acceptable
Monitoring of computer systems for detecting unauthorized access or data breach	Acceptable
Research and development of new products	Acceptable
Installation of computer software	Acceptable
Outsource service providers in the field of information technology	Acceptable
Cloud computing	Indefinite and overbroad, as this may refer to a broad range of software/services relating to cloud computing (e.g. in class 009 Downloadable cloud-computing software for {specify the function of the software used in cloud computing, e.g., deploying virtual machines to a cloud computing platform, managing virtual machines on a cloud computing platform, etc.}; see  above.  Applicant may amend as “Providing virtual computer systems and virtual computer environments through cloud computing” and “Computer services, namely, cloud hosting provider services” if accurate.	Computer services, namely, cloud hosting provider services; Providing virtual computer systems and virtual computer environments through cloud computing;
Electronic monitoring of personally identifying information to detect identity theft via the internet	Acceptable
Maintenance and updating of computer software	Acceptable
Data encryption services	Acceptable
Data security consultancy	Acceptable
Design, creation, hosting and maintenance of websites for others	Acceptable
Technical research	Indefinite/overbroad.  Generally, research services are classified according to the underlying subject matter of such services.  Accordingly, greater specificity as to the field of such services is required for appropriate classification.	The examining attorney is able to provide a recommendation as the nature of applicant’s services is particularly unclear.
Development of new products	Acceptable
Information technology (IT) consultancy	Acceptable
Computer system design	Acceptable
Copying of computer software	Acceptable
Computer software design	Acceptable
Computer software consultancy	Acceptable
Computer security consultancy	Acceptable
Development of computer platforms	Acceptable
Electronic data storage	Acceptable
Software as a service (SaaS)	Indefinite, as the nature of such services is unclear and may refer to a range of class 042 services (e.g.             Consulting services in the field of software as a service (SAAS),             Software as a service (SAAS) services featuring software for {specify the function of the programs, e.g., for use in database management, for service desk management, for accounting, etc., and, if software is content- or field-specific, the content or field of use}, etc.)  Accordingly, clarification as to such services is required.	Software as a service (SAAS) services featuring software for {specify the function of the programs, e.g., for use in database management, for service desk management, for accounting, etc., and, if software is content- or field-specific, the content or field of use};
Software development	Acceptable
Technological consultancy	Indefinite/overbroad.  Generally, research services are classified according to the underlying subject matter of such services.  Accordingly, greater specificity as to the field of such services is required for appropriate classification.	Computer technology consultancy;
Computer programming	Acceptable
Conducting technical project studies	Indefinite/overbroad.  Generally, conducting studies are classified according to the underlying subject matter of such services.  Accordingly, greater specificity as to the field of such services is required for appropriate classification (e.g. Conducting scientific feasibility studies in class 042, Market research studies in class 035, etc.)	Conducting scientific feasibility studies;

 

(emphasis added).  See TMEP §§1402.01, 1402.03.

 

Applicant may amend the identification to list only those items that are within the scope of the goods and services set forth in the application or within the scope of a previously accepted amendment to the identification.  See 37 C.F.R. §2.71(a); TMEP §§1402.06 et seq., 1402.07.   

 

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.

 

Advisory: Multiple Classes

 

The application identifies goods and/or services that may encompass goods/services in more classes than are currently in the applied-for application; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Sections 1(b) and 44, if any classes are added:

 

(1)       List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.

 

(2)       Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule).  The application identifies goods and/or services that are classified in at least 4 classes; however, applicant submitted a fee(s) sufficient for only 3 class(es).  Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

See an overview of the requirements for a Trademark Act Sections 1(b) and 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class.  See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a).  For information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee by TEAS and in a paper submission, please go to http://www.gov.uspto.report/trademark/laws-regulations/how-satisfy-requirements-multiple-class-trademark-electronic-application.

 

 Section 44 Application with Intent to Perfect – Foreign Registration Required

 

The application specifies both an intent to use basis under Trademark Act Section 1(b) and a claim of priority under Section 44(d) based on a foreign application.  See 15 U.S.C. §§1051(b), 1126(d); 37 C.F.R. §2.34(a)(2), (a)(4).  However, no copy of a foreign registration has been provided even though the application indicates applicant’s intent to rely on Section 44(e) as an additional basis for registration.  See 15 U.S.C. §1126(e).

 

An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin.  15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016.  In addition, an applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law.  15 U.S.C. §1126(b); TMEP §§1002.01, 1004.

 

Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available.  TMEP §1003.04(a).  A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin.  TMEP §1004.01.  If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin.  TMEP §1016.  In addition, applicant must also provide an English translation if the foreign registration is not written in English.  37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b).  The translation should be signed by the translator.  TMEP §1004.01(b).

 

If the foreign registration has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English translation, as appropriate), applicant should so inform the trademark examining attorney and request that the U.S. application be suspended until a copy of the foreign registration is available.  TMEP §§716.02(b), 1003.04(b).

 

If applicant cannot satisfy the requirements of a Section 44(e) basis, applicant may request that the mark be approved for publication based solely on the Section 1(b) basis.  See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.35(b)(1); TMEP §§806.02(f), 806.04(b), 1003.04(b).  Although the mark may be approved for publication on the Section 1(b) basis, it will not register until an acceptable allegation of use has been filed.  See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103.  Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration.  See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.04(b). 

 

Alternatively, applicant has the option to amend the application to rely solely on the Section 44(e) basis and request deletion of the Section 1(b) basis.  See 37 C.F.R. §2.35(b)(1); TMEP §806.04.  The foreign registration alone may serve as the basis for obtaining a U.S. registration.  See 37 C.F.R. §2.34(a)(3); TMEP §806.01(d).

 

Clarification Regarding Legal Entity of Record

 

The designation “A/S” is included in applicant’s name; however, the legal entity is set forth as a “corporation.”  Generally, “A/S” identifies a “Aksjeselskap,” and not a corporation.  Therefore, applicant must specify whether the legal entity is an Aksjeselskap or a corporation and amend the application accordingly.  TMEP §803.03(h); see 37 C.F.R. §§2.32(a)(2), (a)(3)(ii), 2.61(b).

 

If applicant is an Aksjeselskap, applicant must amend the legal entity and clarify the foreign country of incorporation or organization.  TMEP §803.03(h).  If applicant is a corporation, applicant must provide the legal name of the corporation and U.S. state or foreign country of incorporation or organization.  See TMEP §803.03(c).

 

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).

 

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. 

 

For this application to proceed further, applicant must explicitly address each refusal and/or requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  For a requirement, applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

In addition, because applicant filed a TEAS RF application, applicant must respond online using the Trademark Electronic Application System (TEAS) to avoid incurring an additional fee.  See 37 C.F.R. §2.23(b)(1), (c). 

 

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.    

 

 

/Dustin T. Bednarz/

Examining Attorney

USPTO Law Office 121

dustin.bednarz@uspto.gov

571-270-1151

 

 

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 January 16, 2020 for

U.S. Trademark Application Serial No. 88641485

 

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. 

 

 

/Dustin T. Bednarz/

Examining Attorney

USPTO Law Office 121

dustin.bednarz@uspto.gov

571-270-1151

 

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 January 16, 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.”