To: | Faulkner Industries (jgrant@grantpatetns.com) |
Subject: | U.S. Trademark Application Serial No. 88654589 - HURRICANE - N/A |
Sent: | August 06, 2020 01:23:58 PM |
Sent As: | ecom104@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88654589
Mark: HURRICANE
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Correspondence Address: |
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Applicant: Faulkner Industries
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Reference/Docket No. N/A
Correspondence Email Address: |
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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 06, 2020
This Office action is supplemental to and supersedes the previous Office action issued on January 21, 2020 in connection with this application. The assigned trademark examining attorney inadvertently omitted a refusal of registration relevant to the mark in the subject application. See TMEP §§706, 711.02. Specifically, the drawing in the U.S. registration must match the mark in the foreign registration and the foreign registration is required..
In addition, the following requirements have been withdrawn: A true copy, photocopy, or certified copy of the foreign registration is required not required because applicant has not yet provided the foreign registration for HURRICANE. See TMEP §§713.02, 714.04.
The trademark examining attorney apologizes for any inconvenience caused by the delay in raising these issues.
Applicant must address all issue raised in this Office action, in addition to the issues raised in the Office action dated January 21, 2020. 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01.
The following is a SUMMARY OF ISSUES that applicant must address:
• NEW ISSUE: Mark On Drawing Differs From Mark On Specimen
• NEW ISSUE: Foreign Registration Required
Applicant must respond to all issues raised in this Office action and the previous January 21, 2020 Office action, within six (6) months of the date of issuance of this Office action. 37 C.F.R. §2.62(a); see TMEP §711.02. If applicant does not respond within this time limit, the application will be abandoned. 37 C.F.R. §2.65(a).
NEW ISSUE: MARK ON DRAWING DIFFERS FROM MARK ON SPECIMEN
The USPTO cannot accept applicant’s drawing of the mark in the U.S. application because it does not match the mark in the foreign registration; that is, the mark in the drawing is not a “substantially exact representation of the mark” in the foreign registration. See 37 C.F.R. §2.51(c); TMEP §§807.12(b), 1011.01. Only slight, inconsequential variations are permitted between the mark in the U.S. application and the mark in the foreign registration. In re Hacot-Colombier, 105 F.3d 616, 619, 41 USPQ2d 1523, 1525 (Fed. Cir. 1997); In re Larios S.A., 35 USPQ2d 1214, 1216-17 (TTAB 1995); TMEP §1011.01.
In this case, the U.S. drawing displays the mark as HURRICANE. However, the foreign registration displays the mark as HURRICANE LADDERS. The mark in the U.S. drawing does not match the mark on the foreign registration because the U.S. drawing lacks the term “LADDERS.”
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 U.S. application. See 37 C.F.R. §2.72(a)-(b); TMEP §§807.14 et seq. Specifically, the addition of the term “LADDERS” would materially change the mark as a whole, from HURRICANE to HURRICANE LADDERS. Therefore, the additional term cannot be accepted.
Applicant may respond to this issue by amending the filing basis to Section 1(a) or 1(b), if applicant can satisfy the requirements for the chosen basis. See 15 U.S.C. §1051(a)-(b); 37 C.F.R. §2.35(b)(1); TMEP §806.03. A Section 1 basis does not require applicant to submit a foreign registration but requires evidence of applicant’s mark in use in commerce. See 15 U.S.C. §1051(a)-(b); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a), 2.76(b)(2), 2.88(b)(2); TMEP §904.
For more information about drawings, amending the basis, and instructions on how to respond online using the Trademark Electronic Application System (TEAS) response form, see the Drawing webpage.
NEW ISSUE: FOREIGN REGISTRATION REQUIRED
A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in the applicant’s country of origin. TMEP §1004.01. If an applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, the applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to the applicant’s country of origin. TMEP §1016.
Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin. If the foreign registration is not written in English, applicant must also provide an English translation. 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).
RESPONSE OPTIONS
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
How to respond. Click to file a response to this nonfinal Office action.
Erdman, Rachel
/Rachel Erdman/
Examining Attorney
Law Office 104
(571) 272-4717
rachel.erdman@uspto.gov
RESPONSE GUIDANCE