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 30, 2020

 

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

 

SUMMARY OF ISSUES:

• Mark Description Requirement/Clarify Color
• Translation Requirement
• TEAS Plus Status Lost- Fee Required

 

SEARCH OF USPTO DATABASE OF MARKS

 

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).

 

However, applicant must respond to the following requirements:

 

MARK DESCRIPTION REQUIREMENT/CLARIFY IF COLOR MARK

 

The drawing in the application does not show the mark in color (other than black and white) nor does it include a claim that color is a feature of the mark. However, in the mark description applicant references the colors “white” and “black”. Therefore, applicant must clarify if the mark is a “color” mark, i.e., applicant is claiming the specific colors black and white as color features of the mark, or if the mark is “black and white” meaning no specific colors are claimed as mark features. TMEP §807.07(d). If the mark is not in color, and black and white are not a feature of the mark, applicant must amend the mark description to delete all references to color.

To clarify how black and white are being used in the mark, applicant may satisfy one of the following: 

(1)       If black and white are a feature of the mark, applicant must provide a color claim to include them and amend the description to identify where black, white appear in the literal and/or design elements of the mark.  The following color claim and description are suggested, if accurate:

 Color claim:  “The colors black and white are claimed as a feature of the mark.”

Description:  “The mark consists of the stylized wording “Fleetsiders" in white Bleeding Cowboy font with a black stippled effect, and the stylized wording “Pocos pero locos” below in  black letters with white outlining all on a black background which is a color feature of the mark.”

(2)       If black and white are not a feature of the mark, applicant must amend the mark description to delete all references to color in the mark description.

“The mark consists of the stylized wording “Fleetsiders" in a bleeding cowboy font with a stippled effect and the stylized outlined wording "Pocos pero locos” below”.

TMEP §807.07(d).

ENGLISH TRANSLATION REQUIRED

 

To permit proper examination of the application, applicant must submit an English translation of the foreign wording in the mark.  37 C.F.R. §§2.32(a)(9), 2.61(b); see TMEP §809.  The following English translation is suggested:  The English translation of “POCOS PERCO LOCOS” in the mark is “FEW BUT CRAZY”.  TMEP §809.03.  See attached translation evidence.

 

Processing Fee Required – Considered TEAS Standard Application

Processing fee required.  Applicant must submit an additional processing fee of $125 per class because the application as filed did not meet the TEAS Plus application filing requirements.  See 37 C.F.R. §2.22(a)(15)-(16), (c); TMEP §§819.01(m), 819.04.  Specifically, applicant did not provide an English translation of all non-English wording.  37 C.F.R. §2.22(a)(15)-(16); TMEP §819.01(m).  In this case, the mark comprises or includes foreign terms that were not translated. 

 

The additional processing fee is required regardless of whether applicant satisfies this requirement by submitting a translation of the non-English wording in the mark.

 

Accordingly, the application will no longer be treated as TEAS Plus; it is now considered a TEAS Standard application. 

 

RESPONSE

 

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. 

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.

Because of the legal technicalities and strict deadlines of the trademark application process, applicant is encouraged to hire a private attorney who specializes in trademark matters to assist in this process.  The assigned trademark examining attorney can provide only limited assistance explaining the content of an Office action and the application process.  USPTO staff cannot provide legal advice or statements about an applicant’s legal rights.  TMEP §§705.02, 709.06.  See Hiring a U.S.-licensed trademark attorney for more information. 

 

 

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

 

 

/Lee-Anne Berns/

Examining Attorney

Law Office 118

(571) 272 1168

Lee-anne.Berns@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.