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:  February 08, 2021

 

This Office action is supplemental to and supersedes the previous Office action issued on July 2, 2020 in connection with this application.  The assigned trademark examining attorney inadvertently omitted clarifying information about the applicant’s response options to the issue identified in the July 2, 2020 Office action.  See TMEP §§706, 711.02.  Specifically, the July 2, 2020 Office action did not include the advisory that applications on the Supplemental Register cannot proceed with a Section 1(b) intent-to-use filing basis.

 

The trademark examining attorney apologizes for any inconvenience caused by the delay in raising this response option advisory.

 

Applicant must address the new issue raised in this Office action, in addition to the issue raised in the Office action dated January 2, 2020, which is also incorporated for applicant’s convenience in this Office action.  The issue raised in the previous July 2, 2020 Office action is as follow and is maintained:  Amended Dates of Use Are Not Acceptable- Amended Dates of First Use Are after Date of Signing & Filing of Application. 

 

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

 

            • NEW ISSUE:  SECTION 1(b) APPLICATIONS NOT ELIGIBLE FOR REGISTRATION ON THE SUPPLEMENTAL REGISTER

            • ISSUE MAINTAINED AND CONTINUED: AMENDED DATES OF USE ARE NOT ACCEPTABLE- AMENDED DATES OF FIRST USE ARE AFTER DATE OF

SIGNING & FILING OF APPLICATION

 

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).

 

NEW ISSUE:  SECTION 1(b) APPLICATIONS NOT ELIGIBLE FOR REGISTRATION ON THE SUPPLEMENTAL REGISTER

 

In its October 9, 2020 request for reconsideration, the applicant amended the filing basis from a Section 1(a) use-based filing basis to a Section 1(b) intent-to-use filing basis. However, this amendment is not accepted for the reasons set forth below.

 

Specifically, a mark in an application under Trademark Act Section 1(b) is not eligible for registration on the Supplemental Register.  37 C.F.R. §§2.47(d), 2.75(b); TMEP §§815.02, 1102.03.  An application is only permitted to proceed to registration on the Supplemental Register once an acceptable amendment to allege use under 37 C.F.R. §2.76 has been filed. When a Section 1(b) application is successfully amended to the Supplemental Register, the application effective filing date will be the date applicant met the minimum filing requirements under 37 C.F.R. §2.76(c) for the amendment to allege use.  TMEP §§816.02, 1102.03; see 37 C.F.R. §2.75(b).

 

In this case, the applicant currently seeks registration on the Supplemental Register.

 

Because the amendment to the filing basis is not permitted in this case, the previous issue is maintained and continued as follows.

 

Please note the amended response options and response options advisories below.

 

ISSUE MAINTAINED AND CONTINUED: AMENDED DATES OF USE ARE NOT ACCEPTABLE- AMENDED DATES OF FIRST USE ARE AFTER DATE OF SIGNING & FILING OF APPLICATION

 

In the previous Priority Action, registration was refused because the specimen submitted with the original application was an unacceptable web page display. In its June 13, 2020 response, the applicant submitted an otherwise acceptable substitute specimen; however, the dates of use do not support a Section 1(a) use-based filing basis. See 37 C.F.R. §§2.34(a)(1)(i), 2.63(b); TMEP §714.05.

 

That is, the application now sets forth dates of first use anywhere and in commerce of the mark (June 1, 2020) that are after the date the application was signed and filed (December 27, 2019), and clarification is required regarding the basis for registration.  See 37 C.F.R. §2.61(b); TMEP §903.04.  For an application based on use in commerce under Trademark Act Section 1(a), applicant must have used the mark in commerce at least as early as the application filing date.  37 C.F.R. §2.34(a)(1)(i); TMEP §§806.01(a), 901; see 15 U.S.C. §1051(a)(2), (a)(3)(C).

 

Therefore, the refusal to register the applied-for mark is maintained and made final.

 

RESPONSE OPTIONS

 

Applicant may clarify both dates of first use by satisfying one of the following:

 

(1)        If the mark was in use in commerce on or before the application filing date, applicant must amend the date(s) of first use to specify the correct date(s), verified with an affidavit or signed declaration under 37 C.F.R. §2.20.  TMEP §903.04; see 37 C.F.R. §§2.71(c), 2.193(e)(1).

 

(2)        If the mark was not in use in commerce on or before the application filing date, applicant may 1) amend the application to seek registration on the Principal Register, 2) amend the filing basis to intent to use under Section 1(b), if applicant can meet the requirements for the new basis and 3) subsequently file an acceptable allegation of use and amend the application back to the Supplemental Register.  TMEP §903.04; see TMEP §806.03(c).  With this option, “registration may not be granted until the applicant files an acceptable allegation of use.”  TMEP §1103.

 

To amend an application to one based on a bona fide intention to use the mark in commerce under Trademark Act Section 1(b), an applicant must provide the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “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.”  See 37 C.F.R. §2.34(a)(2).

 

Please note that an application with a Section 1(b) filing basis is not eligible for registration on the Supplemental Register until an acceptable amendment to allege use meeting the requirements of 37 C.F.R. §2.76 has been timely filed.  37 C.F.R. §2.47(d); TMEP §§816.02, 1102.03. Therefore, an amendment to the Principal Register will be required if the applicant chooses an option.

 

REFUSAL ADVISORY: If the applicant amends the application back to the Principal Register, a new refusal under Section 2(e)(4) of the Trademark Act will issue because the applied-for mark is primarily merely a surname. Trademark Act Section 2(e)(4), 15 U.S.C. §1052(e)(4); see TMEP §1211. 

 

Subsequently, if the applicant files an acceptable allegation of use and also amends to the Supplemental Register, the application effective filing date will be the date applicant met the minimum filing requirements under 37 C.F.R. §2.76(c) for an amendment to allege use.  TMEP §§816.02, 1102.03; see 37 C.F.R. §2.75(b). 

 

NEW SEARCH ADVISORY: In addition, the undersigned trademark examining attorney will conduct a new search of the USPTO records for conflicting marks based on the later application filing date.  TMEP §§206.01, 1102.03.

 

For more information about Section 1(b) basis requirements, and instructions on how to satisfy them online using the Trademark Electronic Application System (TEAS) form, please go to the Basis webpage.

 

For an overview of the response options referenced above and instructions on how to satisfy these requirements online using the Trademark Electronic Application System (TEAS) form, please go to the Dates of Use webpage.

 

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.

 

The applicant may call or email the assigned trademark examining attorney with specific questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06. 

 

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.    

 

 

/Deborah L. Meiners/

Attorney Advisor

Law Office 110

(571) 272-8993

Deborah.Meiners@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 February 08, 2021 for

U.S. Trademark Application Serial No. 88740641

 

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. 

 

 

/Deborah L. Meiners/

Attorney Advisor

Law Office 110

(571) 272-8993

Deborah.Meiners@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 February 08, 2021, 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.”