UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.  A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.

 

 

ISSUE/MAILING DATE: 10/9/2018

 

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:

 

• REFUSAL UNDER SECTION 2(d)- LIKELIHOOD OF CONFUSION- CLASS 25 ONLY
• PRIOR-FILED PENDING APPLICATION MAY PRESENT BAR TO REGISTRATION- ADVISORY ONLY
• AMENDMENT TO THE IDENTIFICATION OF GOODS REQUIRED
• FOREIGN REGISTRATION CERTIFICATE REQUIRED
• APPLICATION NOT SIGNED OR VERIFIED- VERIFICATION AND SIGNATURE REQUIRED

 

REFUSAL UNDER SECTION 2(d)- LIKELIHOOD OF CONFUSION- CLASS 25 ONLY

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 5162182.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registration.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a consumer would be confused, mistaken, or deceived as to the source of the goods of the applicant and registrant(s).  See 15 U.S.C. §1052(d).  Determining likelihood of confusion is made 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).  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017).  However, “[n]ot all of the [du Pont] factors are relevant to every case, and only factors of significance to the particular mark need be considered.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1366, 101 USPQ2d 1713, 1719 (Fed. Cir. 2012) (quoting In re Mighty Leaf Tea, 601. F.3d 1342, 1346, 94 USPQ2d 1257, 1259 (Fed. Cir 2010)).  The USPTO may focus its analysis “on dispositive factors, such as similarity of the marks and relatedness of the goods [and/or services].”  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)); see TMEP §1207.01. 

 

SIMILARITY OF MARKS

 

Applicant’s mark is CDG in stylized form.

 

The mark in U.S. Registration No. 5162182 is CDG NY in standard character form.

 

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 Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)); In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988)); TMEP §1207.01(b).

 

First, 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). In this case, the literal element in the applied-for mark is entirely comprised of the letters “CDG” and the cited registered mark also contains the letters “CDG”.

 

Although applicant’s mark does not contain the entirety of the registered mark, applicant’s mark is likely to appear to prospective purchasers as a shortened form of registrant’s mark.  See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ707, 709 (TTAB 1985)).  Thus, merely omitting some of the wording from a registered mark may not overcome a likelihood of confusion.  See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257; In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii).  In this case, applicant’s mark does not create a distinct commercial impression from the registered mark because it contains some of the wording in the registered mark and does not add any wording that would distinguish it from that mark.

 

Second, the entire applied-for mark “CDG” is phonetically identical to the letters “CDG” in the cited registered mark. While the cited registered mark also contains the additional letters “NY”, 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).

 

Third, 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 is typically less significant or less dominant when comparing marks.  See In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Nat’l Data Corp., 753 F.2d at 1060, 224 USPQ at 752; TMEP §1207.01(b)(viii), (c)(ii). In this case, the letters “NY” are disclaimed in the cited registered mark because the letters are geographically descriptive. Therefore, the more significant or dominant portion of the cited registered mark are the arbitrary or fanciful letters “CDG”.

 

Further, consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark.  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) (“VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (“[T]he dominance of BARR in [a]pplicant’s mark BARR GROUP is reinforced by its location as the first word in the mark.”); Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered” when making purchasing decisions). In this case, the first portion of the cited registered mark is “CDG”. It follows that the portion of the cited registered mark that consumers are the most inclined to focus on is “CDG”, which is visually and phonetically identical to the entire applied-for mark “CDG”.

 

Lastly, a mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition.  See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii).  Thus, a mark presented in stylized characters and/or with a design element generally will not avoid likelihood of confusion with a mark in typed or standard characters because the marks could be presented in the same manner of display.  See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”). In this case, the cited registered mark is in standard character form, and thus the mark can be stylized in any fashion, which is likely to cause consumer confusion if the applicant’s and registrant’s marks are stylized in identical or similar fashions.

 

RELATEDNESS OF GOODS

 

The applicant’s goods in relevant part are “Clothing, namely, one-piece dresses, jackets, suits, vests, coats, sweat shirts, trousers and pants, shirts, blouses, dresses, skirts, T-shirts, nightwear, underwear, evening gowns, sweaters, cardigans, overalls, garters, belts, waistbands, suspenders, neckties, scarves, hosiery; shoes; athletic shoes; overshoes; hats and caps; gloves; swimwear; boots; masquerade costumes; clothing of leather.”

 

The goods in U.S. Registration No. 5162182 are “Women's, men's, and children's clothing and accessories, namely, dresses, pants, shirts, sweaters, jackets, shoes, scarves, belts, and hats.”

 

In this case, both the application and the registration uses broad wording to describe clothing, which presumably encompasses all goods of the type described. Specifically, the registrant’s “women’s, men’s and children’s…dresses” encompasses the applicant’s “one-piece dresses.” Similarly, the applicant’s “dresses,” “pants,” “shirts,” “sweaters,” “jackets,” “shoes,” “scarves,” “belts,” and “hats” encompasses all of the registrant’s goods for women, men and children.”  See, e.g., Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015); In re N.A.D., Inc., 57 USPQ2d 1872, 1874 (TTAB 2000).  Further, the applicant’s “clothing of leather” encompasses all of the registrant’s goods in its identification, which does not specify a material composition.

 

Additionally, the goods 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)). 

 

Determining likelihood of confusion is based on the description of the goods stated in the application and registration at issue, not on evidence of actual use.  See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)). 

 

In sum, applicant’s mark and registrant’s mark are identical in part, and thus create the same commercial impression and the goods are legally identical, and thus commercially related and likely to be encountered together in the marketplace by consumers. Therefore, consumers are likely to be confused and mistakenly believe that the products originate from a common source. Therefore, registration must be refused under Section 2(d) of the Lanham Act.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.

 

Applicant should note the following additional potential ground for refusal.

 

PRIOR-FILED PENDING APPLICATION MAY PRESENT BAR TO REGISTRATION- ADVISORY ONLY

 

Information regarding pending Application Serial No. 86814932 is enclosed.  The filing date of the referenced application precedes applicant’s filing date.  There may be a likelihood of confusion under Trademark Act Section 2(d) between applicant’s mark and the referenced mark.  If the referenced application registers, registration may be refused in this case under Section 2(d).  37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon entry of a response to this Office action, action on this case may be suspended pending final disposition of the earlier-filed application.

 

If applicant believes that there is no potential conflict between this application and the earlier-filed application, then applicant may present arguments relevant to the issue in a response to this Office action.  The election not to submit arguments at this time in no way limits applicant’s right to address this issue at a later point.

 

However, applicant must respond to the issues below.

 

AMENDMENT TO THE IDENTIFICATION OF GOODS REQUIRED

 

The wording in the identification of goods is indefinite and too broad and must be clarified for the reasons set forth below.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

In general, applicant must amend this wording to specify the common commercial or generic name of the goods.  See TMEP §1402.01.  If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses.  See id.

 

In particular, the goods in which further clarification is required are noted below. In each instance where further clarification as to the nature of the goods is required, the examining attorney has provided a suggestion to resolve the issue in bold, italics and underline. If the suggestions are not accurate, the applicant may utilize the USPTO’s ID Manual (link below) to search for the goods contemplated.

 

Please note that indefinite words such as “apparatus,” “machines,” “components,” “devices,” “materials,” or “parts” are not acceptable, and such wording must be followed by “namely,” and a list of each specific product identified by its common commercial or generic name.  See TMEP §§1401.05(d), 1402.03(a).

 

Additionally, the identification of goods contains parentheses.  Generally, applicants should not use parentheses and brackets in identifications in their applications so as to avoid confusion with the USPTO’s practice of using parentheses and brackets in registrations to indicate goods that have been deleted from registrations or in an affidavit of incontestability to indicate goods not claimed.  See TMEP §1402.12.  The only exception is that parenthetical information is permitted in identifications in an application if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity or scope of the identification, e.g., “fried tofu pieces (abura-age).”  Id.

 

Therefore, applicant must remove the parentheses from the identification and incorporate any parenthetical information into the description of the goods or delete the matter entirely where specifically indicated below.

 

Please also note that the applicant’s “trophies” in Class 14 is too broad because it can include “trophies of common metal” in Class 06, “trophies of precious metal” in Class 14 or “non-metal trophies” in Class 20. Therefore, the applicant must specify the material composition of the goods to determine the proper classification, as shown below. See 37 C.F.R. §§2.32(d), 2.86.

 

Similarly, the wording “shopping bags” is too broad because it can include goods in more than one international class. Id. For example, this wording can include “paper” and “plastic” shopping bags in Class 16 or “reusable” shopping bags in Class 18, as shown below.

 

Also, the wording “tapes” is too broad and the applicant must further specify the particular tapes contemplated to determine the proper classification. For example, “tape for fixing wigs” is properly classified in Class 26, as shown below.

 

Applicant may respond by (1) adding one or more international class(es) to the application, and reclassifying the above goods accordingly; or (2) deleting from the application the goods for all but the number of international class(es) for which the application fee was submitted.  See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq.  If applicant adds one or more international classes to the application, applicant must comply with the multiple-class application requirements specified in this Office action.

 

Next, applicant has classified “futon” in International Class 24; however, the proper classification is International Class 20.  Therefore, applicant may respond by (1) adding International Class 20 to the application and reclassifying these goods in the proper international class, (2) deleting “futon and” from the application, or (3) deleting the remainder of the items in the identification and reclassifying the specified goods in the proper international class.  See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq.  Again, if applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.

 

Applicant may substitute the following wording, if accurate: 

 

            Class 06: Trophies of common metal.

 

Class 09: Personal digital assistants in the shape of a watch; smartphones; smartphone accessories, namely, smartphone straps, smartphone cases, smartphone covers, specialty smartphone holsters adapted for carrying smartphones, smartphone stands adapted for smartphones, smartphone sleeves, smartphone bags specially adapted for carrying smartphones; personal computer and notebook computer accessories, namely, personal computer and notebook computer straps, personal computer and notebook computer cases, personal computer and notebook computer covers, specialty personal computer and notebook computer holsters adapted for carrying personal computer and notebook computer, personal computer and notebook computer stands adapted for personal computer and notebook computer stands, personal computer and notebook computer sleeves and personal computer and notebook computer bags; tablet computer accessories, namely, tablet computer straps, tablet computer cases, tablet computer covers, specialty tablet computer holsters adapted for carrying tablet computer, tablet computer stands adapted for tablet computer, tablet computer sleeves, and tablet computer bags; keyboard covers, namely, keyboard dust covers; headphones; earphones; ear plugs for swimmers; ear plugs for divers; binoculars; temperature indicators; telecommunication machines and apparatus, namely, smartphones; electronic machines apparatus and their replacement and structural parts, namely, table computers; decorative magnets; hourglasses; Eye glasses and goggles; sunglasses; contact lenses.

 

Class 14: Precious metals; unwrought and semi-wrought precious stones and their imitations; jewellery cases; key rings; trophies of precious metal; personal ornaments, namely, badges of precious metal, necklaces, chokers, bracelets, pendants, rings, earrings, necktie pins, cufflinks, brooches, lockets, rosaries, jewelry chains; watches; clocks; pocket watches; shoe ornaments of precious metal in the nature of jewelry.

 

Class 16: Paper and plastic shopping bags.

 

Class 18: Folding briefcases; shoulder bags; Gladstone bags; briefcases; suitcases; carry-on bags; trunks; handbags; Boston bags; schoolchildren's backpacks; backpacks; rucksacks; credit card cases; reusable shopping bags; wheeled shopping bags; purses, not of precious metal (not of precious metal); key cases; wallets, not of precious metal (not of precious metal); commuter's-pass holders in the nature of business card cases; business card cases; vanity cases, not fitted (not fitted); umbrellas and their parts; industrial packaging containers of leather; clothing for domestic pets; walking sticks; canes.

 

Class 20: Non-metal trophies; futons.

 

Class 24: Personal articles of woven textile, namely, towels and handkerchief; mosquito nets; bedsheets; futon and quilts; fitted and unfitted linen futon and quilts covers cases (linen); unstuffed futon ticks, namely, unstuffed futon covers not of paper (unstuffed futon); pillowcases (pillow slips); throw blankets; woven fabrics, other than edding ribbons for tatami mats (other than edding ribbons for tatami mats); knitted fabrics; felt and non-woven textile fabrics; oil cloths; gummed waterproof cloths; vinyl coated cloths for use in the manufacture of furniture covers; rubberized cloths; leather cloths for use in the manufacture of furniture covers; filtering materials of textile, namely, cheese cloth; table napkins of textile; dish cloths; shower curtains; textile banners and flags, not of paper (not of paper); fitted toilet seat covers of textile; fitted chair covers of textile, excluding high chars; wall hangings of textile; curtains; table cloths, not of paper (not of paper); draperies in the nature of thick drop curtains (thick drop curtains); shrouds (sheets for wrapping corpses); Japanese cloth screens in the nature of curtains with black-and-white stripes (Kuroshiro-maku); Japanese cloth screens in the nature of curtains with red-and-white stripes (Kohaku-maku); billiard cloth, namely, baize (baize).

 

Class 25: Clothing, namely, one-piece dresses, jackets, suits, vests, coats, sweat shirts, trousers and pants, shirts, blouses, dresses, skirts, T-shirts, nightwear, underwear, evening gowns, sweaters, cardigans, overalls, garters, belts, waistbands, suspenders, neckties, scarves, hosiery; shoes; athletic shoes; overshoes; hats and caps being headwear; gloves; swimwear; boots; masquerade costumes; clothing of leather, namely, pants, jackets and vests.

 

Class 26: Insignias for wear, not of precious metal, namely, ornamental cloth patches; ornamental novelty badges for wear, not of precious metal; buckles for clothing; brooches for clothing; special sash clips for obi; bonnet pins, not of precious metal; ornamental adhesive patches for jackets; brassards; electric hair curlers, other than hand implements; eyelets for clothing; tapes for affixing wigs; haberdashery ribbons; haberdashery, namely, knitted raschel lace fabrics; haberdashery, namely, embroidery lace fabrics; tufts of lace trimming and tassels; braids; knitting sticks; needle threaders; sewing boxes; dressmakers' impressing blades, namely, a spatula shaped sewing tool used for impressing, marking and creasing on fabric; sewing thimbles; pin and needle cushions; boxes for needles; artificial flowers; expanding armbands for holding sleeves; buttons and the like; false beards; false moustaches; non-electric hair curlers, other than hand implements (non-electric); shoe trimmings ornaments, not of precious metals; shoe eyelets; shoe laces; metal fasteners for shoes and boots; human hair.

 

Applicant’s goods 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 or add goods 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 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 will further limit scope, and once goods are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

For assistance with identifying and classifying goods 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- ADVISORY

 

The application identifies goods in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Sections 1(b) and 44:

 

(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 fees already paid (view the USPTO’s current fee schedule).  The application identifies goods that are classified in at least nine (9) classes; however, applicant submitted fees sufficient for only six (6) classes.  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 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

See an overview of the requirements for a Sections 1(b) and 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

FOREIGN REGISTRATION CERTIFICATE REQUIRED

 

The application specifies both an intent to use basis under Trademark Act Section 1(b) and a claim of priority under Section 44(d) based on a foreign application.  See 15 U.S.C. §§1051(b), 1126(d); 37 C.F.R. §2.34(a)(2), (a)(4).  However, no copy of a foreign registration has been provided even though the application indicates applicant’s intent to rely on Section 44(e) as an additional basis for registration.  See 15 U.S.C. §1126(e).

 

An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin.  15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016.  In addition, an applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law.  15 U.S.C. §1126(b); TMEP §§1002.01, 1004.

 

Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available.  TMEP §1003.04(a).  A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin.  TMEP §1004.01.  If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin.  TMEP §1016.  In addition, applicant must also provide an English translation if the foreign registration is not written in English.  37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b).  The translation should be signed by the translator.  TMEP §1004.01(b).

 

If the foreign registration has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English translation, as appropriate), applicant should so inform the trademark examining attorney and request that the U.S. application be suspended until a copy of the foreign registration is available.  TMEP §§716.02(b), 1003.04(b).

 

If applicant cannot satisfy the requirements of a Section 44(e) basis, applicant may request that the mark be approved for publication based solely on the Section 1(b) basis.  See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.35(b)(1); TMEP §§806.02(f), 806.04(b), 1003.04(b).  Although the mark may be approved for publication on the Section 1(b) basis, it will not register until an acceptable allegation of use has been filed.  See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103.  Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration.  See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.04(b). 

 

Alternatively, applicant has the option to amend the application to rely solely on the Section 44(e) basis and request deletion of the Section 1(b) basis.  See 37 C.F.R. §2.35(b)(1); TMEP §806.04.  The foreign registration alone may serve as the basis for obtaining a U.S. registration.  See 37 C.F.R. §2.34(a)(3); TMEP §806.01(d).

 

APPLICATION NOT SIGNED OR VERIFIED- VERIFICATION AND SIGNATURE REQUIRED

 

The application was unsigned, resulting in the application not being properly verified.  See 37 C.F.R. §§2.2(n), 2.33(a)-(b), 2.34(a)(1)(i), (a)(2), (a)(3)(i), (a)(4)(ii), 2.193(e)(1).  Applicant must properly sign and therefore verify the application in an affidavit or signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §§2.2(n), 2.33(a)-(b), 2.34(a)(1)(i), (a)(2), (a)(3)(i), (a)(4)(ii), 2.193(e)(1); TMEP §804.02.

 

To respond to this requirement online using the Trademark Electronic Application System (TEAS) response Office action form, answer “yes” to the TEAS response form wizard question #10, and follow the instructions within the form for signing.  The TEAS online form will require two signatures:  one in the “Declaration Signature” section and one in the “Response Signature” section.  For more information about a signed declaration and required verified statement and how to provide them using TEAS, please go to http://www.gov.uspto.report/trademark/laws-regulations/verified-statement.

 

RESPONSE GUIDELINES

 

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE:  Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application.  See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820.  TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods.  37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04.  However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.  

 

 

 

/Deborah Meiners/

Attorney Advisor

Law Office 110

(571) 272-8993

Deborah.Meiners@USPTO.gov

 

 

TO RESPOND TO THIS LETTER:  Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application.  For technical assistance with online forms, e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned trademark examining attorney.  E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

 

All informal e-mail communications relevant to this application will be placed in the official application record.

 

WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants).  If an applicant is represented by an attorney, the attorney must sign the response. 

 

PERIODICALLY CHECK THE STATUS OF THE APPLICATION:  To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/.  Please keep a copy of the TSDR status screen.  If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199.  For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

 

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 10/9/2018 FOR U.S. APPLICATION SERIAL NO. 88081415

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 10/9/2018 (or sooner if specified in the Office action).  A response transmitted through the Trademark Electronic Application System (TEAS) must be received before midnight Eastern Time of the last day of the response period.  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the TEAS response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.