Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

FINAL 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) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

 

Issue date:  March 11, 2021

 

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on February 16, 2021.

 

In a previous Office action dated February 8, 2021, the trademark examining attorney refused registration of the applied-for mark based on the following:  Section 1(b) Applications not Eligible for Registration on the Supplemental Register.  In addition, the following issues was maintained and continued:  Amended Dates of Use are Not Acceptable- Amended Dates of First Use are After Date of Signing and Filing of Application.

 

Based on applicant’s response, the trademark examining attorney notes that the following issue is moot/obviated following:  Section 1(b) Applications not Eligible for Registration on the Supplemental Register.  See TMEP §§713.02, 714.04. 

 

However, the trademark examining attorney maintains and now makes FINAL the outstanding issue below.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

AMENDED DATES OF USE ARE NOT ACCEPTABLE- AMENDED DATES OF FIRST USE ARE AFTER DATE OF SIGNING & FILING OF APPLICATION

 

In the previous February 8, 2021 Office action, registration was refused, in part, because the dates of use submitted with the otherwise acceptable specimen did not support a Section 1(a) use-based filing basis. That is, the dates of use submitted in the applicant’s October 9, 2020 request for reconsideration were after the date of filing the application, which is not acceptable in a Section 1(a) use-based application. See 37 C.F.R. §§2.34(a)(1)(i), 2.63(b); TMEP §714.05.

 

In its February 16, 2021 response, the applicant submitted a substitute specimen; however, for the same reason identified above, this specimen is also not acceptable.

 

That is, the application now sets forth dates of first use anywhere and in commerce of the mark (November 17, 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).

 

To put it differently, November 17, 2020 is after December 27, 2019. The date of first use anywhere and the date of first use in commerce must be on or before December 27, 2019, if accurate. If the date of first use anywhere and the date of first use in commerce are after December 27, 2019 then this application cannot proceed as a Section 1(a) use-based application. Please see response option #2 below if the applicant was not using its mark on or before December 27, 2019 in commerce.

 

If applicant was using its mark in commerce on or before December 27, 2019, please see response option #1 below.

 

Because this issue has yet to be resolved, 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.

 

How to respond.  Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).

 

 

/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 March 11, 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 March 11, 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.”