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:  September 29, 2020

 

OPEN APPLICATION ISSUES THAT MUST BE ADDRESSED IN RESPONSE TO OFFICE ACTION:

 

The following are the open application issues that the applicant must address in order to have a complete response to this Office action:

 

-Requirement for Clarification of Legal Entity Type –“Limited Company” Does Not Identify a Legal Entity Designation Recognized in the United States

 

-Requirement for Amendment to the Mark Description Statement –Accurate But Incomplete

 

 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.

 

 

 

SEARCH

 

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. In order to pursue registration, however, the applicant must respond to the following requirements.

 

 

 

REQUIREMENT for Clarification of Legal Entity Type –“Limited Company” Does Not Identify a Legal Entity Designation Recognized in the United States

 

The application identifies applicant as “Black Sesame International Holding Limited”, a “Limited Company.”  This is not an acceptable legal entity designation because it does not identify a particular type of legal entity in the United States or in the State of California.  See TMEP §803.03.  Therefore, applicant must specify the particular type of legal entity applying, e.g., corporation, association, partnership, or joint venture, and provide the additional information explained below about that entity.  See 37 C.F.R. §§2.32(a)(3)(ii)-(v), 2.61(b); TMEP §803.03. Also attached are pages from the website for the California Secretary of State [sos.ca.gov/business-programs/business-entities/starting-business/types/] titled “Starting a Business –Entity Types” showing that there is no “limited company” entity designations recognized by the State of California –the state that the applicant has listed as the state of organization for the applicant in the record for this application.

 

If applicant is a corporation, applicant must specify the U.S. state or foreign country under which it is incorporated.  37 C.F.R. §2.32(a)(ii); TMEP §803.03(c).

 

If applicant is an association, applicant must specify the U.S. state or foreign country under whose laws the applicant is organized or exists, and indicate whether the association is incorporated or unincorporated.  37 C.F.R. §2.32(a)(ii); TMEP §803.03(c).

 

If applicant is a partnership, applicant must specify the U.S. state or foreign country under whose laws the partnership is organized.  37 C.F.R. §2.32(a)(ii); TMEP §803.03(b).  In addition, for a U.S. partnership, applicant must list, if not yet specified, the names, legal entities, and national citizenship (for individuals), or the U.S. state or foreign country of organization or incorporation (for businesses) of all general partners.  37 C.F.R. §2.32(a)(iii).  For foreign partnerships, the names and citizenships of the general partners are not required.  See TMEP §803.03(b).

 

If applicant is a joint venture, applicant must specify the U.S. state or foreign country under whose laws the joint venture is organized.  37 C.F.R. §2.32(a)(ii); TMEP §803.03(b).  In addition, for a U.S. joint venture, applicant must list the names, legal entities, and national citizenship (for individuals) or the U.S. state or foreign country of organization or incorporation (for businesses) of all active members of the joint venture.  37 C.F.R. §2.32(a)(iv); TMEP §803.03(b).  For foreign joint ventures, the names and citizenships of the active members are not required.  TMEP §803.03(b).

 

If, in response to the above request, applicant provides information indicating that it is not the owner of the mark, registration will be refused because the application was void as filed.  See 37 C.F.R. §2.71(d); TMEP §§803.06, 1201.02(b).  An application must be filed by the party who owns or is entitled to use the mark as of the application filing date.  See 37 C.F.R. §2.71(d); TMEP §1201.02(b).

 

 

REQUIREMENT for Amendment to Mark Description Statement –Accurate But Incomplete

 

Applicant must submit an amended description of the mark because the current one is incomplete and does not describe all the significant aspects of the mark.  37 C.F.R. §2.37; see TMEP §§808.01, 808.02.  Descriptions must be accurate and identify all the literal and design elements in the mark.  See 37 C.F.R. §2.37; TMEP §§808 et seq. 

 

The applicant may address this issue by amending to the following suggested amended Mark Description statement, if accurate: 

 

 

The mark consists of a stylized black sesame formed by a design of a camera eye in the center within two concentric drop-shaped bands with several parallel horizontally stacked letter "i"s over and emanating from the upper left side of the drop, forming lines depicting speed or movement.

 

 

.If applicant has any questions about its application or needs assistance in responding to this Office Action please telephone the assigned trademark examining attorney directly at the number listed below.

 

 

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

 

 

/Amy Kean/

Trademark Attorney, Law Office 112

Phone: 571-272-8854

Amy.Kean@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 September 29, 2020 for

U.S. Trademark Application Serial No. 90023081

 

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. 

 

 

/Amy Kean/

Trademark Attorney, Law Office 112

Phone: 571-272-8854

Amy.Kean@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 September 29, 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.”