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 09, 2020

 

 The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

The trademark examining attorney will defer a search of the USPTO database of registered and pending marks for potentially conflicting marksuntil applicant responds to the issues raised in this Office action.  TMEP §704.02.

SUMMARY OF ISSUES

·         Unsigned Application

·         Domicile Information Required

·         Section 44/1(b) Application Requirements; Additional Information Required

·         Identification and Classification of Goods and Services

·         Multiple-Class Application Requirements

 

UNSIGNED APPLICATION

The application was unsigned, resulting in the application not being properly verified.  See TMEP §804.  Applicant must properly sign and therefore verify the application in an affidavit or signed declaration under 37 C.F.R. §2.20.  See 37 C.F.R. §§2.2(n), 2.33(a), (b)(2)-(c), 2.34(a)(2), (a)(3)(i), (a)(4)(ii); TMEP §804.02. 

 

The following statements must be verified:  That applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; that applicant believes applicant is entitled to use the mark in commerce on or in connection with the goods or services specified in the application; 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; and that the facts set forth in the application are true.  37 C.F.R. §§2.33(b)(2), (c), 2.34(a)(2), (a)(3)(i), (a)(4)(ii). 

 

For more information about the verified statement and instructions on providing one using the online Trademark Electronic Application System (TEAS) response form, see the Verified statement webpage.

 

DOMICILE INFORMATION REQUIRED

Applicant must either provide documentation to support applicant’s domicile address or supply an accurate domicile address.  All applications must include the applicant’s domicile address, and domicile dictates whether an applicant is required to have an attorney who is an active member in good standing of the bar of the highest court of a U.S. state or territory represent the applicant at the USPTO.  37 C.F.R. §§2.2(o)-(p), 2.11(a), 2.189, 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(p); Examination Guide 4-19, at I.A.  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 a U.S.-licensed attorney qualified to practice before the USPTO under 37 C.F.R. §11.14.  37 C.F.R. §2.11(a).

 

The application record lists applicant as a juristic entity and specifies a U.S. street address as applicant’s domicile.  It is unclear from the record whether the U.S. street address provided applicant’s headquarters where the entity’s senior executives or officers ordinarily direct and control the entity’s activities, as the domicile information is incomplete and appears to be lacking a unit number. See attached evidence indicating that there are four units at this address.  If the U.S. street address of record is not applicant’s correct domicile address, applicant must provide the applicant’s correct domicile street address.  See 37 C.F.R. §§2.11(b), 2.61(b), 2.189.

 

If applicant amends the application to list a domicile address outside of the United States or its territories, or if applicant elects not to provide documentation to support its U.S. street address as explained below, applicant must appoint 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.  See Hiring a U.S.-licensed trademark attorney for more information.  If applicant provides documentation to support its U.S. street address, the requirement to appoint a U.S.-licensed attorney will be withdrawn.  Alternatively, if applicant appoints a U.S.-licensed attorney, the requirement for documentation will be withdrawn.

 

If the street address of record is applicant’s correct domicile address or if applicant provides a different U.S. street address as the applicant’s domicile address, and applicant elects not to appoint a U.S.-licensed attorney as its representative, then applicant must provide the following documentation to support its U.S. street address.  See 37 C.F.R. §§2.11(b), 2.61(b), 2.189; Examination Guide 4-19 (Rev.) at I.A.2. Specifically, applicant must provide the most recent documentation showing that the address is the applicant’s or registrant’s business headquarters, for example one of the following:

           

            (1) the most recent final annual or quarterly report or other similar report; or (2) a current certificate of good standing for the corporation or other business entity issued by a federal or state government agency.

           

Examination Guide 4-19, at I.A.2; see 37 C.F.R. §§2.11(b), 2.61(b), 2.189. 

 

Submitted documentation must show the name, listed address, and the date of the document but should redact other personal and financial information. 

 

To provide documentation supporting applicant’s domicile.  Open the correct TEAS response form and enter the serial number, answer “yes” to wizard question #3, and on the “Additional Statement(s)” page, below the “Miscellaneous Statement” field, click the button below the text box to attach documentation to support the U.S. street address.

 

To appoint a U.S.-licensed attorney.  To appoint an attorney, applicant should submit a completed Trademark Electronic Application System (TEAS) Change Address or Representation 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).

 

To provide applicant’s domicile street address if the listed address is not applicant’s correct or current domicile. Open the correct TEAS response form and enter the serial number, answer “yes” to wizard question #5, and provide applicant’s street address on the “Owner Information” page.  If a different U.S. street address is provided as applicant’s domicile address, applicant must provide the same information and documentation requested above.  Information provided in the TEAS response form will be publicly viewable.

 

If applicant wants to hide its domicile address from public view because of privacy or other concerns, applicant must have a mailing address that can be made public and differs from its domicile address.  In this case, applicant must follow the steps below in the correct order to ensure the domicile address will be hidden:

 

(1)        First submit a TEAS Change Address or Representation (CAR) form.  Open the form, enter the serial number, click “Continue,” and

(a)        Use the radio buttons to select “Owner” for the role of the person submitting the form;

(b)        Answer “Yes” to the wizard question asking, “Do you want to UPDATE the mailing address, email address, phone or fax number(s) for the trademark owner/holder?” and click “Continue;”

(c)        On the “Owner Information” page, if the previously provided mailing address has changed, applicant must enter its new mailing address in the “Mailing Address” field, which will be publicly viewable;

(d)       On the “Owner Information” page, uncheck the box next to “Domicile Address” and enter the new domicile address in the text box immediately below the checkbox. 

(2)        Then submit a TEAS response form to indicate the domicile address has been changed.  Open the form and

(a)        Answer “yes” to wizard question #3 and click “Continue;”

(b)        Click on the “Miscellaneous Statement” box on the “Additional Statement(s)” page, and enter a statement in the text box immediately below the checkbox that the domicile address was previously changed in the CAR form.

 

 

SECTION 44/1(b) APPLICATION REQUIREMENTS; ADDITIONAL INFORMATION REQUIRED 

Applicant is domiciled in the United States and has asserted an intent to perfect a Trademark Act Section 44(e) filing basis in its application.  See 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3).  However, an applicant domiciled in the United States is generally not eligible to register a mark under Section 44(e) unless the applicant (1) owns a trademark registration from a foreign country that is a party to a treaty or agreement relating to trademarks to which the United States is also a party or extends reciprocal rights to nationals of the United States, and (2) can establish that the foreign country in which the trademark is registered is the applicant’s country of origin.  15 U.S.C. §1126(b)-(c); see TMEP §§1002.03-.05.  “Country of origin” refers to a country other than the United States in which an applicant has a bona fide and effective industrial or commercial establishment, or if there is no such establishment, the foreign country in which an applicant is domiciled.  15 U.S.C. §1126(c); TMEP §1002.04-.05.

 

If applicant intends to rely on Section 44(e) as a basis for registration, applicant must submit the following:

 

(1)        A true copy, photocopy, certification or certified copy of the foreign trademark registration upon which applicant is relying for U.S. registration, along with an English translation if the foreign registration certificate is not written in English.  See 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1002.05, 1004 et seq.  If applicant submits a copy of the foreign registration, it must be a copy of a document that has been issued to the applicant by or certified by the intellectual property office in the applicant’s country of origin.  TMEP §1004.01; and

 

(2)        A written statement that applicant has a bona fide and effective industrial or commercial establishment in the foreign country in which its mark is registered.  See 15 U.S.C. §1126(c); TMEP §§1002.01, 1002.04-.05.

 

If applicant cannot satisfy the above requirements for a Section 44(e) basis, applicant elect to proceed under the Section 1(b) basis also claimed, if applicant can satisfy all of the requirements for that basis.  See 15 U.S.C. §§1051(a)-(b), 1126(e); 37 C.F.R. §2.35(b), TMEP §806.03.

 

Additionally, Applicant’s submission of a foreign application that specifies an owner different from that of the U.S. applicant raises a question regarding the applicant’s ownership of the foreign application.  See TMEP §1005.  Specifically, the U.S. application sets forth the owner as Fashion One Television LLC, while the foreign application sets forth the owner as Apricot Technologies Limited.

 

In an application filed solely under Section 44(d), the applicant must be the owner of the foreign application on the filing date of the U.S. application.  TMEP §1005; see In re De Luxe, N.V., 990 F.2d 607, 609, 26 USPQ2d 1475, 1477 (Fed. Cir. 1993); In re Tong Yang Cement Corp., 19 USPQ2d 1689, 1690-91 (TTAB 1991).  Accordingly, applicant must establish ownership of the foreign application on the date of filing in the United States to retain the priority filing date.  TMEP §1005; see 37 C.F.R. §2.61(b).

 

If applicant can prove the foreign application was assigned to applicant on or before the filing date of the U.S. application, the Section 44(d) basis can remain in the application.  See TMEP §1005.  Applicant may establish ownership of the foreign application by submitting (1) a copy of an assignment document, (2) certification from the foreign trademark office that reflects applicant’s ownership of the foreign application and the date of the assignment, or (3) a printout from the intellectual property’s office website that shows the foreign application was assigned to applicant on or before the filing date of the U.S. application.  See TMEP §§1005, 1006.

IDENTIFICATION OF GOODS AND SERVICES

The Trademark Act requires that a trademark or service mark application must include a “specification of … the goods [or services]” in connection with which the mark is being used or will be used.  15 U.S.C. §1051(a)(2) (emphasis added), (b)(2) (emphasis added); see 15 U.S.C. §1053.  Specifically, a complete application must include a “list of the particular goods or services on or in connection with which the applicant uses or intends to use the mark.”  37 C.F.R. §2.32(a)(6) (emphasis added).  This requirement for a specification of the particular goods and/or services applies to applications filed under all statutory bases.  See 15 U.S.C. §§1051(a)(2), 1051(b)(2), 1053, 1126(d)-(e), 1141f; 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.01(b)-(c).

Several entries in the identification are overbroad (including goods or services in multiple classes) and/or indefinite (ambiguous as to the specificity of the product), and require further clarification.  The original language of applicant’s identification is listed in the left column, the particular issue in the middle, and the attorney’s suggested language for amending the identification to comply with the degree of particularity required is listed in the right hand column.

Original Wording	Reason Unacceptable			Suggested Wording
International Class 9				International Class 9
Computer hardware	Acceptable as written			Computer hardware
Computer hardware and peripheral devices and software for playback, streaming, transmitting, receiving audio-visual media content via the Internet	Applicant must separate individual entries with semicolons, not commas. Applicant must also clarify whether the software for word processing, is downloadable, pre-recorded, or provided as a service in Class 42.			[Class 9] Computer hardware and peripheral devices; downloadable computer software for playback, streaming, transmitting, receiving audio-visual media content via the Internet; [Class 42] providing temporary use of online, non-downloadable software for playback, streaming, transmitting, receiving audio-visual media content via the Internet;
Computer software, namely, downloadable computer software for word processing, computer software for document management, for database integration, for producing financial models, for use in database management	Applicant must indicate whether all this software, not simply the downloadable computer software for word processing, is downloadable, pre-recorded, or provided as a service in Class 42.			[Class 9] Computer software, namely, downloadable computer software for word processing, downloadable computer software for document management, for database integration, for producing financial models and for use in database management; [Class 42] providing temporary use of online, non-downloadable software for document management, for database integration, for producing financial models and for use in database management;
computer software for authorizing access to databases	Applicant must indicate whether this software is downloadable, pre-recorded, or provided as a service in Class 42.			[Class 9] downloadable computer software for authorizing access to databases; [Class 42] providing temporary use of online, non-downloadable software for authorizing access to databases;
computer software for creating searchable databases	Applicant must indicate whether this software is downloadable, pre-recorded, or provided as a service in Class 42.			[Class 9] downloadable computer software for creating searchable databases; [Class 42] providing temporary use of online, non-downloadable software for creating searchable databases
computer software for use in customer relationship management (CRM)	Applicant must indicate whether this software is downloadable, pre-recorded, or provided as a service in Class 42.			[Class 9] downloadable computer software for use in customer relationship management (CRM); [Class 42] providing temporary use of online, non-downloadable software for computer software for use in customer relationship management (CRM)
computer software to automate data warehousing	Applicant must indicate whether this software is downloadable, pre-recorded, or provided as a service in Class 42.			[Class 9] downloadable computer software to automate data warehousing; [Class 42] providing temporary use of online, non-downloadable software for computer software to automate data warehousing
software that provides real-time, integrated business management intelligence by combining information from various databases and presenting it in an easy-to-understand user interface	Applicant must indicate whether this software is downloadable, pre-recorded, or provided as a service in Class 42.			[Class 9] downloadable software that provides real-time, integrated business management intelligence by combining information from various databases and presenting it in an easy-to-understand user interface; [Class 42] providing temporary use of online, non-downloadable software that provides real-time, integrated business management intelligence by combining information from various databases and presenting it in an easy-to-understand user interface
Computer software, namely, communications software for connecting computer network users	Applicant must indicate whether this software is downloadable, pre-recorded, or provided as a service in Class 42.			[Class 9] downloadable Computer software, namely, communications software for connecting computer network users; [Class 42] providing temporary use of online, non-downloadable software being communications software for connecting computer network users
computer software for use in providing multiple user access to a global computer information network	Applicant must indicate whether this software is downloadable, pre-recorded, or provided as a service in Class 42.			[Class 9] downloadable computer software for use in providing multiple user access to a global computer information network; [Class 42] providing temporary use of online, non-downloadable software for use in providing multiple user access to a global computer information network
e-commerce software to allow users to perform electronic business transactions via a global computer network	Applicant must indicate whether this software is downloadable, pre-recorded, or provided as a service in Class 42.			[Class 9] downloadable e-commerce software to allow users to perform electronic business transactions via a global computer network; [Class 42] providing temporary use of online, non-downloadable e-commerce software to allow users to perform electronic business transactions via a global computer network
computer software for controlling self-service terminals, for administration of computer networks, for administration of computer local area networks, for use in computer access control, for controlling and managing access server applications, for controlling and managing access server applications, for monitoring and controlling communication between computers and automated machine systems, to maintain and operate computer system, for providing access to the Internet	Applicant must indicate whether this software is downloadable, pre-recorded, or provided as a service in Class 42. Applicant must also delete duplicative or repetitive functions			[Class 9] downloadable computer software for controlling self-service terminals, for administration of computer networks, for administration of computer local area networks, for use in computer access control, for controlling and managing access server applications,, for monitoring and controlling communication between computers and automated machine systems, to maintain and operate computer system, for providing access to the Internet; [Class 42] providing temporary use of online, non-downloadable software for controlling self-service terminals, for administration of computer networks, for administration of computer local area networks, for use in computer access control, for controlling and managing access server applications,, for monitoring and controlling communication between computers and automated machine systems, to maintain and operate computer system, for providing access to the Internet;
Computer software for processing digital images, for processing digital music files, for organizing and viewing digital images and photographs, for creating and editing music and sounds, for creating digital animation and special effects of images, for manipulating digital audio information for use in audio media applications, to enhance the audio-visual capabilities of multimedia applications, namely, for the integration of text, audio, graphics, still images and moving pictures	Applicant must indicate whether this software is downloadable, pre-recorded, or provided as a service in Class 42.			[Class 9] Downloadable computer software for processing digital images, for processing digital music files, for organizing and viewing digital images and photographs, for creating and editing music and sounds, for creating digital animation and special effects of images, for manipulating digital audio information for use in audio media applications, to enhance the audio-visual capabilities of multimedia applications, namely, for the integration of text, audio, graphics, still images and moving pictures; [Class 42] providing temporary use of online, non-downloadable software for processing digital images, for processing digital music files, for organizing and viewing digital images and photographs, for creating and editing music and sounds, for creating digital animation and special effects of images, for manipulating digital audio information for use in audio media applications, to enhance the audio-visual capabilities of multimedia applications, namely, for the integration of text, audio, graphics, still images and moving pictures;
computer games	Applicant must indicate whether this is software is downloadable, pre-recorded, or provided as a service in Class 42.			[Class 9] downloadable computer game software; [Class 41] providing temporary use of online, non-downloadable computer games software
computer games downloadable from a global computer network	Acceptable as written			computer games downloadable from a global computer network
computer games for use on mobile and cellular phones	Applicant must indicate whether this software is downloadable, pre-recorded, or provided as a service in Class 42.			[Class 9] downloadable computer games for use on mobile and cellular phones; [Class 41] providing temporary use of online, non-downloadable software for computer games for use on mobile and cellular phones
Computer software, namely, computer software for encryption, computer software for running development programs and application programs in a common development environment, computer operating software, computer graphics software, computer anti-virus software, computer software for the creation of firewalls, computer software and firmware for operating system programs, computer aided design (CAD) software for general use, computer aided manufacturing (CAM) software for general use	Applicant must indicate whether this software is downloadable, pre-recorded, or provided as a service in Class 42.			[Class 9] Downloadable computer software, namely, computer software for encryption, computer software for running development programs and application programs in a common development environment, computer operating software, computer graphics software, computer anti-virus software, computer software for the creation of firewalls, computer software and firmware for operating system programs, computer aided design (CAD) software for general use, computer aided manufacturing (CAM) software for general use; [Class 42] providing temporary use of online, non-downloadable software, namely, computer software for encryption, computer software for running development programs and application programs in a common development environment, computer operating software, computer graphics software, computer anti-virus software, computer software for the creation of firewalls, computer software and firmware for operating system programs, computer aided design (CAD) software for general use, computer aided manufacturing (CAM) software for general use
computer peripherals, namely, computer mice and mouse pads, computer stands, computer speakers, computer cables, computer card adapters, computer cases, and computer keyboards, joysticks and keypads	Acceptable as written			computer peripherals, namely, computer mice and mouse pads, computer stands, computer speakers, computer cables, computer card adapters, computer cases, and computer keyboards, joysticks and keypads
interface cards for data processing equipment in the form of printed circuits	Acceptable as written			interface cards for data processing equipment in the form of printed circuits
computer networking hardware and data communications equipment, namely, electronic communications systems comprised of computer hardware for the transmission of data between two points, computer network adapters, switches, routers, and hubs	Acceptable as written			computer networking hardware and data communications equipment, namely, electronic communications systems comprised of computer hardware for the transmission of data between two points, computer network adapters, switches, routers, and hubs
computer memory devices, namely, flash memory cards, flash memory expansion modules, memory boards, random access memory cards and secure digital (SD) memory cards	Acceptable as written			computer memory devices, namely, flash memory cards, flash memory expansion modules, memory boards, random access memory cards and secure digital (SD) memory cards
electronic control apparatus, namely, electronic controllers for computer hardware and peripherals excluding gaming apparatus, electric control panels, and computer terminals	Acceptable as written			electronic control apparatus, namely, electronic controllers for computer hardware and peripherals excluding gaming apparatus, electric control panels, and computer terminals
electronic circuits and printed electronic circuits	Acceptable as written			electronic circuits and printed electronic circuits
electric wires for communication equipment	Acceptable as written			electric wires for communication equipment
graphite and fuel cell electrodes	Acceptable as written			graphite and fuel cell electrodes
telephones	Acceptable as written			telephones
radio, television and satellite aerials	Acceptable as written			radio, television and satellite aerials
batteries, namely, electric storage batteries, galvanic batteries, general purpose batteries, solar batteries, and batteries for cell phones, watches and cameras	Acceptable as written			batteries, namely, electric storage batteries, galvanic batteries, general purpose batteries, solar batteries, and batteries for cell phones, watches and cameras
microprocessors	Acceptable as written			microprocessors
computer keyboards	This wording is duplicative and must either be modified so that it is not duplicative, or deleted
motion picture films about video recordings featuring music and artistic performances, education, entertainment, fashion, sports and culture	Applicant must clarify this entry; it is not clear whether these are motion pictures having video recordings as the subject or if these are recorded video motion picture films. Applicant must also identify the type of “education, entertainment, fashion, sports and culture” featured.			motion picture being  video recordings featuring music and artistic performances, education in the field of art, entertainment being plays, fashion shows, sports competitions
International Class 35				International Class 35
Provision of information and advisory services relating to e-commerce	Acceptable as written			Provision of information and advisory services relating to e-commerce
provision of information relating to market studies	Acceptable as written			provision of information relating to market studies
provision of market research information	Acceptable as written			provision of market research information
provision of information and advisory services relating to e-commerce	This wording is duplicative and should either be amended so that it is no longer duplicative, or deleted.
advertising and business management consultancy	Acceptable as written			advertising and business management consultancy
personnel recruitment	Acceptable as written			personnel recruitment
personnel management consulting	Acceptable as written			personnel management consulting
advertising agency services	Acceptable as written			advertising agency services
advertising the goods and services of others	Acceptable as written			advertising the goods and services of others
mediation of contracts for purchase and sale of products and services	Acceptable as written			mediation of contracts for purchase and sale of products and services
advertising services for promoting the brokerage of stocks and other securities for others	Acceptable as written			advertising services for promoting the brokerage of stocks and other securities for others
advertising services of a radio and television advertising agency	Acceptable as written			advertising services of a radio and television advertising agency
negotiation of business contracts for others	Acceptable as written			negotiation of business contracts for others
business management and organization consultancy	Acceptable as written			business management and organization consultancy
computerized file management	Acceptable as written			computerized file management
rental of advertising space	Acceptable as written			rental of advertising space
rental of advertising space on web sites	Acceptable as written			rental of advertising space on web sites
leasing of office equipment	Acceptable as written			leasing of office equipment
rental of office machinery and equipment	Acceptable as written			rental of office machinery and equipment
market analysis and research services	Acceptable as written			market analysis and research services
market research studies	Acceptable as written			market research studies
computer database management services	Acceptable as written			computer database management services
retail store services featuring clothing, books, computer equipment, computer software, furniture, grocery, jewellery, food, cosmetics, toys, automobile parts and audio equipment	Acceptable as written			retail store services featuring clothing, books, computer equipment, computer software, furniture, grocery, jewellery, food, cosmetics, toys, automobile parts and audio equipment

 

 

 

An applicant may only amend an identification to clarify or limit the goods and/or services, but not to add to or broaden the scope of the goods and/or services. 37 C.F.R. §2.71(a); see 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.

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS

The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Sections 1(b) and 44:

 

(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 2 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 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).

 

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

 

ADVISORY—APPLICANT MAY WISH TO SEEK TRADEMARK COUNSEL

Because of the legal technicalities and strict deadlines involved in the USPTO application process, applicant may wish to hire a private attorney specializing in trademark matters to represent applicant in this process and provide legal advice.  Although the undersigned trademark examining attorney is permitted to help an applicant understand the contents of an Office action as well as the application process in general, no USPTO attorney or staff is permitted to give an applicant legal advice or statements about an applicant’s legal rights.  TMEP §§705.02, 709.06. 

 

For attorney referral information, applicant may consult the American Bar Association’s Consumers’ Guide to Legal Help; an online directory of legal professionals, such as FindLaw®; or a local telephone directory.  The USPTO, however, may not assist an applicant in the selection of a private attorney.  37 C.F.R. §2.11.

 

RESPONDING TO OFFICE ACTIONS AND ONLINE RESOURCES

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.

 

• How to respond:  Click to file a response to this nonfinal Office action  

 

• Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding. For technical, non-legal assistance with navigating electronic forms, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or by phone at (571) 272-9250 (press 0).

 

• For more information about trademarks and the registration process: The USPTO website provides information for those unfamiliar with the process of applying for federal trademark registration, such as an e-booklet about registering trademarks, FAQs, and more.  Two tools on the USPTO’s website that are particularly helpful during the examination process are the (1) informational videos and (2) application processing timelines.  The videos provide information in a broadcast news format regarding a range of issues that arise during the examination of an application, such as specimens and goods and services.  The application processing timelines provide information regarding the USPTO’s processing time for certain documents, as well as crucial legal deadlines.

 

• To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. 

 

• 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 applicant has questions about the nature of the refusal(s) or requirement(s) in the Office action, applicant may email or call the assigned trademark examining attorney. All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, neither the trademark examining attorney nor any USPTO staff is permitted to provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06. If needed, contact information for the supervisor of the office or unit listed in the signature block is listed on the USPTO website. Applicant should first contact the examining attorney listed below.

 

 

/Diane Collopy/

Trademark Examining Attorney

Law Office 107

diane.collopy@uspto.gov

(571) 270-3118 (informal communication only)

.

 

 

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on December 09, 2020 for

U.S. Trademark Application Serial No. 88723999

 

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. 

 

 

Diane Collopy

/Diane Collopy/

Trademark Examining Attorney

Law Office 107

diane.collopy@uspto.gov

(571) 270-3118 (informal communication

 

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 09, 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.”