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 14, 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:

• SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
• CLASSIFICATION AND IDENTIFICATION OF GOODS
• MULTIPLE-CLASS APPLICATION REQUIREMENTS
• EXPLANATION OF MARK’S SIGNIFICANCE REQUIRED

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registrations No. 5226047 and 4238189.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

The applied for mark is VERNIS for “Water supply equipment and sanitary installations; Mixing valves being part of sanitary installations; water supply and water outlet fittings with manual and automatic controls; taps for washstands, for bidets and for sink units, taps for tubs and for showers; Showers, Shower bars, Shower holders, Overhead showers, Lateral-jet showers, Hand showers, Shower hoses; Shower sets consisting of hand shower, shower bar and shower hose; Shower combinations consisting of overhead shower and/or hand shower, shower bar, shower hose and mixer tap; Shower systems; Inflow and outflow fittings, and drainage and overflow fittings for sanitary basins, for washstands, for sink units, for bidets, for bathtubs and for shower trays; Regulating apparatus for water supply apparatus and sanitary installations; Control apparatus for water supply apparatus and sanitary installations; equipment, apparatus and installations for filtering, softening or chilling of water and drinking water; equipment, apparatus and installations for carbonating water and drinking water; filters for treatment of water and drinking water; filters for water purifying apparatus; filters for water and drinking water; filters for water conduits; UV light treatment apparatus (not for medical purposes); dispensing apparatus and tap devices for water and drinking water; kitchen sinks; sinks and built-in sinks; sink units; drip trays for kitchen sinks; flow shapers and flow regulators for sanitary water outlets; water sockets for sanitary installations; installation and fastening parts for sanitary installations, not of metal, as far as included in this class; parts and accessories of the aforesaid goods” in Class 11.

 

The registered mark, VERNO, is registered for “Water purifying apparatus; apparatus for decontaminating water and generating water vapor” in Class 11.

 

The registered mark, VERNO WATER, is registered for “Water purifying apparatus; apparatus for decontaminating water and generating water vapor” in Class 11.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties.  See 15 U.S.C. §1052(d).  Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”).  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017).  Any evidence of record related to those factors need be considered; however, “not all of the DuPont factors are relevant or of similar weight in every case.”  In re Guild Mortg. Co., 912 F.3d 1376, 1379, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019) (quoting In re Dixie Rests., Inc., 105 F.3d 1405, 1406, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997)).

 

Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis:  (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services.  See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01. 

 

COMPARISON OF THE MARKS

 

Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression.  Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v).  “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.”  In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).

 

When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.”  Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1373, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b).  The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks.  In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (C.C.P.A. 1971)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).

 

Consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark.  See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (finding similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876, 23 USPQ2d 1698, 1700 (Fed Cir. 1992) (finding similarity between CENTURY 21 and CENTURY LIFE OF AMERICA in part because “consumers must first notice th[e] identical lead word”); see also In re Detroit Athletic Co., 903 F.3d 1297, 1303, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”).  Here, the portion of the marks that consumers are likely to focus on are the identical portion -- VERN.

 

In fact, the marks differ only by the last syllable, maintaining similarity in sound and appearance.  Slight differences in the sound of similar marks will not avoid a likelihood of confusion.  In re Energy Telecomm. & Elec. Ass’n, 222 USPQ 350, 351 (TTAB 1983); see In re Viterra Inc., 671 F.3d 1358, 1367, 101 USPQ2d 1905, 1912 (Fed. Cir. 2012).

 

Additionally, marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression.  See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii).

 

Further, the addition of the wording WATER in the VERNO WATER mark will not obviate the overall similarity between the marks. Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression.  See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii).  Disclaimed matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant when comparing marks.  In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).  Accordingly, as the wording WATER is disclaimed in the registered mark, the highly similar wording VERNO is the dominant portion of the mark.

 

Lastly, where the goods of an applicant and registrant are identical or virtually identical, the degree of similarity between the marks required to support a finding that confusion is likely declines.  See Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1373, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(b).

 

Therefore, the marks are confusingly similar.

 

COMPARISON OF THE GOODS

 

The goods are compared to determine whether they are similar, commercially related, or travel in the same trade channels.  See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).

 

The compared goods need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i).  They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).

 

Determining likelihood of confusion is based on the description of the goods and/or services stated in the application and registration at issue, not on extrinsic evidence of actual use.  See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).  

 

In this case, the registration uses broad wording to describe “Water purifying apparatus; apparatus for decontaminating water,” which presumably encompasses all goods of the type described, including applicant’s partially identical and otherwise more narrow “Water supply equipment and sanitary installations; Mixing valves being part of sanitary installations; water supply and water outlet fittings with manual and automatic controls; taps for washstands, for bidets and for sink units, taps for tubs and for showers; Showers, Shower bars, Shower holders, Overhead showers, Lateral-jet showers, Hand showers, Shower hoses; Shower sets consisting of hand shower, shower bar and shower hose; Shower combinations consisting of overhead shower and/or hand shower, shower bar, shower hose and mixer tap; Shower systems; Inflow and outflow fittings, and drainage and overflow fittings for sanitary basins, for washstands, for sink units, for bidets, for bathtubs and for shower trays; Regulating apparatus for water supply apparatus and sanitary installations; Control apparatus for water supply apparatus and sanitary installations; equipment, apparatus and installations for filtering, softening or chilling of water and drinking water; equipment, apparatus and installations for carbonating water and drinking water; filters for treatment of water and drinking water; filters for water purifying apparatus; filters for water and drinking water; filters for water conduits; UV light treatment apparatus (not for medical purposes); dispensing apparatus and tap devices for water and drinking water; kitchen sinks; sinks and built-in sinks; sink units; drip trays for kitchen sinks; flow shapers and flow regulators for sanitary water outlets; water sockets for sanitary installations; installation and fastening parts for sanitary installations, not of metal, as far as included in this class”  See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015).  Thus, applicant’s and registrant’s goods are legally identical.  See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).

 

Additionally, the goods and/or services of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.”  In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)).  Thus, applicant’s and registrant’s goods are related.

 

Thus, there is a likelihood of confusion between the applied for mark and the registered marks.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.  However, if applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.

 

CLASSIFICATION AND IDENTIFICATION OF GOODS

 

The identification of goods is indefinite and must be clarified to further specify the nature, use, or subject matter of certain items, as set out in bold below.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.

 

The nature of the wording “water supply equipment and sanitary installations” is unclear. This would is too broad and encompasses goods such as “water supply equipment in the nature of rigid pipes of polypropylene for the supply of drinking water and heating and air conditioning systems in houses, office buildings and industrial buildings” in International Class 19, and “regulating accessories for water supply in the nature of metered valves” in International Class 11. The nature of the wording “sanitary installations” is also unclear.

 

The wording “shower bars” must also be amended. The nature of the wording is unclear as it can identify goods in multiple classes, such as “shower grab bars not of metal” in Class 20, and “metal shower grab bars” in International Class 6.

 

The wording “shower hoses” identifies goods in International Class 17.

 

The nature of the wording “shower holder” is unclear. This wording may identify shower racks, in International Class 21.

 

The nature of the wording “equipment, apparatus and installations for carbonating water and drinking water” is unclear. This wording encompasses goods such as “equipment, apparatus and installations for carbonating water and drinking water in the nature of apparatus for aerating beverages” in International Class 7.  This wording also encompasses goods such as “water treatment units for aerating water” in International Class 11.

 

The nature of applicant’s dispensing apparatus for water is unclear. This wording includes goods such as “non-mechanized pet waterers in the nature of portable water and fluid dispensers for pets” in International Class 21 and “refrigerated dispensing units for water” in Class 11.

 

The identification for “parts and accessories for the aforesaid goods” is indefinite and too broad and must be clarified because this wording does not make clear the nature of the type of part or accessory and could include goods in more than one international class.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03(a).  First, applicant’s identification includes misclassified goods, such as “shower hoses” (properly classified in Class 17). In addition, the wording “accessories” for applicant’s identification for “showers” may identify goods such as “shower racks” in Class 21. Applicant must either (1) specify the common commercial or generic name for each accessory item, or (2) delete this wording from the identification.  See TMEP §§1402.01, 1402.03(a).

 

Applicant may substitute the following wording, if accurate:

 

International Class 6:

 

Shower grab bars made of metal

 

International Class 7:

 

Equipment, apparatus and installations for carbonating water and drinking water, namely, machines for making aerated beverages

 

International Class 11:

 

Water supply equipment and sanitary installations, namely, {indicate goods in International Class 11, e.g., regulating accessories for water supply in the nature of metered valves, sanitary installations in the nature of steam rooms, sanitary installations in the nature of toilet bowls, etc.}; Mixing valves being part of sanitary installations; water supply and water outlet fittings with manual and automatic controls, namely, {clarify the nature of the goods, e.g., baffles being plumping fittings, plumbing fittings in the nature of valves, etc.}; taps for washstands, for bidets and for sink units, taps for tubs and for showers; Showers, Shower grab bars being integral components of showers, Shower holders, Overhead showers, Lateral-jet showers, Hand showers, Shower hoses; Shower sets primarily consisting of hand shower, and also including {state type, e.g., metal , non-metal } shower grab bar and shower hose; Shower combinations consisting primarily of overhead shower and/or hand shower, non-metal shower grab bar, shower hose and mixer tap for water pipes; Shower systems consisting  of {indicate components of systems, e.g., showers and shower cubicles}; Inflow and outflow fittings, and drainage and overflow fittings for sanitary basins, for washstands, for sink units, for bidets, for bathtubs and for shower trays, namely, {indicate goods, e.g., water control valves for faucets, tub control valves, etc.} Regulating apparatus for water supply apparatus and sanitary installations, namely, {indicate goods, e.g., pressure regulators for sanitary installations}; Control apparatus for water supply apparatus and sanitary installations, namely, {indicate specific goods, e.g., water control valves for faucets, shower control fittings in the nature of escutcheons, etc.} ; equipment, apparatus and installations for filtering, softening or chilling of water and drinking water, namely, {indicate goods, e.g., water sterilizers, water purification units, hot water bottle holder with pouch of microwavable material for sustained warmth , portable refrigerators, etc.}; equipment, apparatus and installations for carbonating water and drinking water, namely, {clarify the nature of the goods, e.g., water treatment units for aerating water}; filters for treatment of water and drinking water; filters for water purifying apparatus; filters for water and drinking water; filters for water conduits in the nature of water filters; UV light treatment apparatus, not for medical purposes, namely, {indicate goods in International Class 11, e.g., ultraviolet gel manicure lights, ultraviolet lamps, ultraviolet lamps for aquariums, etc.}; dispensing apparatus and tap devices for water and drinking water, namely, {indicate goods, e.g., refrigerated dispensing units for drinking water,  water filters, etc.}; kitchen sinks; sinks and built-in sinks being sinks integrated into counters or countertops; sink units; drip trays for kitchen sinks; flow shapers and flow regulators for sanitary water outlets; plumbing fittings, namely, water sockets for sanitary installations; installation and fastening parts for sanitary installations, not of metal, as far as included in this class  namely, {indicate goods, e.g., plumbing cocks, flexible pipes being parts of sink plumbing installations, etc.}; structural and component parts and accessories of the aforesaid goods for showers and sinks

 

International Class 17:

 

Shower hoses

 

International Class 20:

 

Shower grab bars not of metal

 

International Class 21:

 

Shower holders in the nature of shower racks

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  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.

 

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 Section 1(b):

 

(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 6 classes; however, applicant submitted a fee(s) sufficient for only 1 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 Trademark Act Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.

 

EXPLANATION OF MARK’S SIGNIFICANCE REQUIRED

 

To permit proper examination of the application, applicant must provide the following information:

 

(1)  Explain whether the wording “VERNIS” in the mark has any meaning or significance in the industry in which the goods and/or services are manufactured/provided, any meaning or significance as applied to applicant’s goods and/or services, or if such wording is a term of art within applicant’s industry. 

 

(2)  Explain whether this wording identifies a geographic place, or has any meaning in a foreign language. 

 

(3)  Submit an English translation of all foreign wording in a mark and a transliteration (the phonetic spelling of the pronunciation, in Latin characters) of all non-Latin characters in a mark.  If the wording does not have meaning in a foreign language, applicant should so specify.   

 

The format for an English translation and transliteration:  “The English translation of “VERNIS” is “<specify>”.

 

The format for when there is no English translation or meaning of the transliteration:  “The wording “VERNIS” has no meaning in a foreign language. 

 

See 37 C.F.R. §§2.32(a)(9)-(a)(10), 2.61(b); TMEP §§809-809.03, 814. 

 

Failure to comply with a request for information is grounds for refusing registration.  In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.

 

RESPONSE GUIDELINES

 

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.

 

Please call or email the assigned trademark examining attorney with 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.    

 

 

Mark Peisecki

/Mark Peisecki/

Trademark Examining Attorney Law Office 105

(571) 270-5399

mark.peisecki@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 14, 2020 for

U.S. Trademark Application Serial No. 88780116

 

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. 

 

 

Mark Peisecki

/Mark Peisecki/

Trademark Examining Attorney Law Office 105

(571) 270-5399

mark.peisecki@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 14, 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.”