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:  July 09, 2020

 

INTRODUCTION

 

This Office action is supplemental to and supersedes the previous Office action issued on March 12, 2020 in connection with this application.  Based on information and/or documentation in applicant’s response, the trademark examining attorney now issues the following new requirement:  color claim amendment requried.  See TMEP §§706, 711.02. 

 

In a previous joint Priority Action/Examiner Amendment dated March 12, 2020, the trademark examining attorney refused registration of the applied-for mark based on the following:  failure to show the applied-for mark in use in commerce with any of the specified goods.  In addition, the examining attorney had amended the record via Examiner Amendment to fix the mark description and color claim.

 

Applicant’s July 6, 2020 response has further amended the color claim in a way that is unacceptable.

 

The following refusal has been obviated:  specimen refusal obviated by submission of an acceptable substitute specimen.  See id. 

 

The following is a SUMMARY OF ISSUES that applicant must address:

 

            •  NEW ISSUE:  Color Claim Amendment Required

 

NEW ISSUE: COLOR CLAIM AMENDMENT REQUIRED

 

Applicant must provide an amended color claim that references only the colors in the drawing of the mark.  See 37 C.F.R. §2.52(b)(1); TMEP §§807.07(a) et seq.  The applicant’s July 6, 2020 response included additional wording that is unnecessary for a color claim, which must only state the colors in the mark. Specifically, the applicant’s color claim currently is a duplicate of the mark description, which is unacceptable. A complete color claim must only list all the colors appearing in the drawing of the mark.  See 37 C.F.R. §2.52(b)(1); TMEP §§807.07(a) et seq. 

                                                    

The following color claim is suggested:  “The colors white and yellow are claimed as a feature of the mark.”

 

 

Applicant must respond to all issues raised in this 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).

 

 

Response guidelines.  For this application to proceed, 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.

 

Because of the legal technicalities and strict deadlines of the trademark application process, applicant is encouraged to hire a private attorney who specializes in trademark matters to assist in this process.  The assigned trademark examining attorney can provide only limited assistance explaining the content of an Office action and the application process.  USPTO staff cannot provide legal advice or statements about an applicant’s legal rights.  TMEP §§705.02, 709.06.  See Hiring a U.S.-licensed trademark attorney for more information. 

 

 

 

How to respond.  Click to file a response to this nonfinal Office action.    

 

 

Alexandra Foster

/Alexandra Foster/

Trademark Examining Attorney

Law Office 117

(571) 272-5111

alexandra.foster1@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.