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:  April 21, 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.

 

SUMMARY OF ISSUES:

• ADVISORY: Prior Pending Application
• Application Signed Using Unauthorized Method
• Identification of Goods

 

 

 

SEARCH RESULTS

 

The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting marks that would bar registration under Trademark Act Section 2(d).  15 U.S.C. §1052(d); TMEP §704.02.  However, a mark in a prior-filed pending application may present a bar to registration of applicant’s mark.

 

 

 

ADVISORY: Prior Pending Application

 

The filing date of pending U.S. Application Serial No. 88671404 precedes applicant’s filing date.  See attached referenced application.  If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application.

 

In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application.  Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.

 

However, applicant must respond to the following requirements.

 

 

 

Application signed using unauthorized method

 

Application signed using an unauthorized method.  The application was verified with a signature made with document-signing software.  The USPTO cannot accept this verification because applicant signed it using a method other than one authorized by 37 C.F.R. §2.193(a), (c) (see below in the “Authorized methods for signing a TEAS response” for acceptable methods).  A signature created by document-signing software is not a designated signing method; therefore, the USPTO cannot accept the verification.  See 37 C.F.R. §2.193(a), (c); TMEP §§611.01(b), 718.03. 

 

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)(1), (c), 2.34(a)(1)(i); TMEP §804.02. 

 

The following statements must be verified:  That applicant believes applicant is the owner of the mark; that the mark is in use in commerce and was in use in commerce as of the application filing date; 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; that the specimen shows the mark as used on or in connection with the goods or services as of the application filing date; and that the facts set forth in the application are true.  37 C.F.R. §§2.33(b)(1), (c), 2.34(a)(1)(i), 2.59(a).  For more information about this, see the Verified statement webpage.

 

Applicant must use one of the following methods for signing Trademark Electronic Application System (TEAS) forms:

 

(1)   Electronic typed signature.  In the TEAS signature block, the signer personally types any combination of letters, numbers, spaces, and/or punctuation marks that the signer has adopted as a signature, placed between two forward slash (/) symbols (e.g., /john doe/).  And if the filer is not the actual signer of the form, the filer may email the completed unsigned form from within TEAS to the signer to personally type his or her e-signature, after which the form will be automatically returned to the filer for submission.

 

(2)   Pen-and-ink traditional handwritten signature.  The filer prints out the completed form in text format and mails or faxes it to the signer who reviews and personally signs and dates it in the usual pen-and-ink manner.  The signature and date portion, together with the wording of a declaration under 37 C.F.R. §2.20, if required, is then scanned by the filer as a jpg or pdf image file and attached to the form for submission. 

 

See 37 C.F.R. §2.193(a); TMEP §§611.01(c), 804.03. 

 

In addition, the name of the signer must be clearly printed or typed near the signature.  37 C.F.R. §2.193(d); TMEP §611.01(c).  The signer’s particular title or position should also be specified.  See TMEP §804.04.

 

To provide these verified statements.  After opening the correct TEAS response form, answer “yes” to wizard question #10, and follow the instructions within the form for signing.  In this case, the form will require two signatures:  one in the “Declaration Signature” section and one in the “Response Signature” section.

 

 

 

IDENTIFICATION OF GOODS

 

The identification of goods is indefinite and must be clarified because the nature of the goods is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may adopt the following identification, if accurate: 

 

International Class 5:              Pre-moistened topical medicated silicone gel sheeting in the form of a pad for treatment of scars.

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See TMEP §1402.07(e).

 

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.

 

 

 

 

Responding to this Office action

 

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.

 

 

 

 

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

 

 

/April Reeves/

April E. Reeves

Examining Attorney

Law Office 124

(571) 272-3681

april.reeves@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 April 21, 2020 for

U.S. Trademark Application Serial No. 88770969

 

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. 

 

 

/April Reeves/

April E. Reeves

Examining Attorney

Law Office 124

(571) 272-3681

april.reeves@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 April 21, 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.”