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:  July 15, 2020

 

This Office action is supplemental to the Examiner’s Amendment issued on July 11, 2020 in connection with this application.  The assigned trademark examining attorney inadvertently omitted a requirement relevant to the mark in the subject application.  See TMEP §§706, 711.02.  Specifically, the assigned trademark examining attorney is issuing a new requirement for documentation to support U.S. domicile based on a USPTO rule change that became effective on August 3, 2019.

 

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

 

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).

 

SUMMARY OF ISSUES

• Documentation to Support Applicant’s Domicile Address or Appointment of US Licensed Attorney Required

 

DOCUMENTATION TO SUPPORT APPLICANT’S DOMICILE ADDRESS OR APPOINTMENT OF US LICENSED ATTORNEY REQUIRED

 

Applicant must either provide documentation to support applicant’s domicile address or appoint a U.S. licensed attorney.  All applications must include the applicant’s domicile address, and domicile dictates whether an applicant is required to have an attorney who is an active member in good standing of the bar of the highest court of a U.S. state or territory represent the applicant at the USPTO.  37 C.F.R. §§2.2(o)-(p), 2.11(a), 2.189, 11.14; Requirement of U.S.-Licensed Attorney for Foreign-Domiciled Trademark Applicants & Registrants, Examination Guide 4-19, at I.A. (Rev. Sept. 2019). 

 

An individual applicant’s domicile is the place a person resides and intends to be the person’s principal home.  37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A.  A juristic entity’s domicile is the principal place of business; i.e., headquarters, where a juristic entity applicant’s senior executives or officers ordinarily direct and control the entity’s activities.  37 C.F.R. §2.2(p); Examination Guide 4-19, at I.A.  An applicant whose domicile is located outside of the United States or its territories is foreign-domiciled and must be represented at the USPTO by a U.S.-licensed attorney qualified to practice before the USPTO under 37 C.F.R. §11.14.  37 C.F.R. §2.11(a).

 

The application record lists applicant as an individual of the United Kingdom and specifies a U.S. street address as applicant’s domicile.  It is unclear from the record whether the U.S. street address provided is the place applicant resides and intends to be applicant’s principal home.  If the U.S. street address of record is not applicant’s correct domicile address, applicant must provide the applicant’s correct domicile street address.  See 37 C.F.R. §§2.11(b), 2.61(b), 2.189.

 

If applicant amends the application to list a domicile address outside of the United States or its territories, or if applicant elects not to provide documentation to support its U.S. street address as explained below, applicant must appoint a U.S.-licensed attorney qualified to practice under 37 C.F.R. §11.14 as its representative before the application may proceed to registration.  See Hiring a U.S.-licensed trademark attorney for more information.  If applicant provides documentation to support its U.S. street address, the requirement to appoint a U.S.-licensed attorney will be withdrawn.  Alternatively, if applicant appoints a U.S.-licensed attorney, the requirement for documentation will be withdrawn.

 

If the street address of record is applicant’s correct domicile address or if applicant provides a different U.S. street address as the applicant’s domicile address, and applicant elects not to appoint a U.S.-licensed attorney as its representative, then applicant must provide the following documentation to support its U.S. street address.  See 37 C.F.R. §§2.11(b), 2.61(b), 2.189; Examination Guide 4-19 (Rev.) at I.A.2. Specifically, applicant must provide documentation showing the name and listed domicile address of the individual for example one of the following:

           

            (1) a current, valid signed rental, lease, or mortgage agreement; or (2) a current valid homeowner’s, renter’s, or motor vehicle insurance policy; or (3) a computer-generated bill issued by a utility company dated within 60 days of the application filing date.

           

Examination Guide 4-19, at I.A.2; see 37 C.F.R. §§2.11(b), 2.61(b), 2.189. 

 

Submitted documentation must show the name, listed address, and the date of the document but should redact other personal and financial information. 

 

To provide documentation supporting applicant’s domicile.  Open the correct TEAS response form and enter the serial number, answer “yes” to wizard question #3, and on the “Additional Statement(s)” page, below the “Miscellaneous Statement” field, click the button below the text box to attach documentation to support the U.S. street address.

 

To appoint a U.S.-licensed attorney.  To appoint an attorney, applicant should submit a completed Trademark Electronic Application System (TEAS) Change Address or Representation form.  The newly-appointed attorney must submit a TEAS Response to Examining Attorney Office Action form indicating that an appointment of attorney has been made and address all other refusals or requirements in this action, if any.  Alternatively, if applicant retains an attorney before filing the response, the attorney can respond to this Office action by using the appropriate TEAS response form and provide his or her attorney information in the form and sign it as applicant’s attorney.  See 37 C.F.R. §2.17(b)(1)(ii).

 

To provide applicant’s domicile street address if the listed address is not applicant’s correct or current domicile. Open the correct TEAS response form and enter the serial number, answer “yes” to wizard question #5, and provide applicant’s street address on the “Owner Information” page.  If a different U.S. street address is provided as applicant’s domicile address, applicant must provide the same information and documentation requested above.  Information provided in the TEAS response form will be publicly viewable.

 

If applicant wants to hide its domicile address from public view because of privacy or other concerns, applicant must have a mailing address that can be made public and differs from its domicile address.  In this case, applicant must follow the steps below in the correct order to ensure the domicile address will be hidden:

 

(1)       First submit a TEAS Change Address or Representation (CAR) form.  Open the form, enter the serial number, click “Continue,” and

(a)       Use the radio buttons to select “Owner” for the role of the person submitting the form;

(b)       Answer “Yes” to the wizard question asking, “Do you want to UPDATE the mailing address, email address, phone or fax number(s) for the trademark owner/holder?” and click “Continue;”

(c)       On the “Owner Information” page, if the previously provided mailing address has changed, applicant must enter its new mailing address in the “Mailing Address” field, which will be publicly viewable;

(d)       On the “Owner Information” page, uncheck the box next to “Domicile Address” and enter the new domicile address in the text box immediately below the checkbox. 

 

(2)       Then submit a TEAS response form to indicate the domicile address has been changed.  Open the form and

(a)       Answer “yes” to wizard question #3 and click “Continue;”

(b)       Click on the “Miscellaneous Statement” box on the “Additional Statement(s)” page, and enter a statement in the text box immediately below the checkbox that the domicile address was previously changed in the CAR form. 

RESPONSE GUIDELINES

 

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.    

 

 

/Mariessa Terrell/

Examining Attorney

Law Office 106

571-272-5764

mariessa.terrell@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 July 15, 2020 for

U.S. Trademark Application Serial No. 88877401

 

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. 

 

 

Terrell, Mariessa

/Mariessa Terrell/

Examining Attorney

Law Office 106

571-272-5764

mariessa.terrell@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 July 15, 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.”