| To: | Neena Zhang (zhangneena@gmail.com) |
| Subject: | U.S. Trademark Application Serial No. 90061577 - BENCROSS - N/A |
| Sent: | December 10, 2020 09:35:17 PM |
| Sent As: | ecom113@uspto.gov |
| Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 90061577
Mark: BENCROSS
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Correspondence Address: UNIT #62738 808 COMMERCE PARK DRIVE
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Applicant: Neena Zhang
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Reference/Docket No. N/A
Correspondence Email Address: |
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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: December 10, 2020
SEARCH OF USPTO DATABASE OF MARKS – PRIOR PENDING APPLICATION FOUND
PRIOR PENDING APPLICATION – POTENTIAL LIKELIHOOD OF CONFUSION
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
While applicant is not required to respond to the issue of the pending application, applicant must respond to the requirements below within six months of the mailing date of this Office action to avoid abandonment.
ADDRESS OF RECORD UNACCPETABLE – APPLICANT’S DOMICILE ADDRESS REQUIRED
Applicant must provide an updated domicile address because the address of is unacceptable. 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. See 37 C.F.R. §§2.2(o)-(p), 2.11(a), 2.189; 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(o); 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 lists applicant as an individual and specifies applicant’s domicile as Unit # 62738 808 Commerce Park Drive, Ogdensburg, New York, a commercial mail receiving agency, instead of a street address. See attached Strader-Ferris International and U.S. Customs and Border Patrol website evidence (showing 808 Commerce Park Drive as the address of Strader-Ferris International); MyUSaddress website evidence (a website owned and run by Strader-Ferris International that offers United States addresses at the Strader-Ferris International 808 Commerce Park Drive warehouse for mail forwarding purposes to individuals outside of the United States); see also the attached Google Maps website evidence (showing MYUSaddress as the entity at 808 Commerce Park Drive). This address is unacceptable as a domicile address because it does not identify the location of the place applicant resides and intends to be applicant’s principal home. See 37 C.F.R. §§2.2(o)-(p), 2.189; Examination Guide 4-19, at I.A.3. Thus, applicant must provide its domicile street address. See 37 C.F.R. §2.189. Alternatively, an applicant may demonstrate that the listed address is, in fact, the applicant’s domicile. Examination Guide 4-19, at I.A.3.
Advisory – How 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 address.
Advisory – How To Provide Applicant’s Domicile Street Address
After opening the correct TEAS response form and entering the serial number, answer “yes” to wizard question #5, and provide applicant’s street address on the “Owner Information” page. 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.
If applicant amends the application to list a domicile street address located outside of the United States or its territories, applicant is foreign-domiciled and must appoint a U.S. licensed attorney qualified to practice before the USPTO 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’s domicile street address is located within the United States or its territories, applicant is not required to appoint a U.S.-licensed attorney.
Advisory – How To Appoint or Designate 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).
Additionally, applicant must respond to the requirement below.
REQUEST FOR INFORMATION – INFORMATION ABOUT MARK REQUIRED
To permit proper examination of the application, applicant must provide the following information:
1. Explain whether the wording “BENCROSS” or “BEN CROSS” in the mark has any meaning or significance in the industry in which the goods are manufactured/provided, any meaning or significance as applied to applicant’s goods, or if such wording is a term of art within applicant’s industry.
2. Explain whether BENCROSS or “BEN CROSS” identifies a geographic place or has any meaning in a foreign language.
3. Does BENCROSS have any meaning in a foreign language? If so please submit an English translation of all foreign wording in a mark If the wording does not have meaning in a foreign language, applicant should so specify.
See 37 C.F.R. §§2.32(a)(9)-(a)(10), 2.61(b); TMEP §§809-809.03, 814.
Additionally, applicant Applicant must clarify whether the name BENCROSS or “BEN CROSS” in the mark identifies a particular living individual. See 37 C.F.R. §2.61(b); TMEP §§813, 1206.03. In this case, the application neither specifies whether the name in the mark identifies a particular living individual nor includes a written consent. See TMEP §§813.01(a)-(b), 1206.04(a), 1206.05. To register a mark that consists of or comprises the name of a particular living individual, including a first name, pseudonym, stage name, or nickname, an applicant must provide a written consent personally signed by the named individual. 15 U.S.C. §1052(c); TMEP §§813, 1206.04(a).
Accordingly, if the name in the mark does not identify a particular living individual, applicant must submit a statement to that effect (e.g., “The name shown in the mark does not identify a particular living individual.”).
However, if the name in the mark does identify a particular living individual, applicant must submit both of the following:
(1) The following statement: “The name(s) shown in the mark identifies a living individual(s) whose consent(s) to register is made of record.” If the name is a pseudonym, stage name, or nickname, applicant must provide the following statement: “BENCROSS identifies {specify name of living individual here}, a living individual whose consent is of record.”
(2) A written consent, personally signed by the named individual(s), as follows: “I, {specify name of living individual here}, consent to the use and registration of my name, BENCROSS, as a trademark and/or service mark with the USPTO.”
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.
ADVISORY – REPRESENTATIVE SPECIMENS WILL BE REQUIRED
Applicant is advised that it may need to include representative specimens for its disparate categories of goods when (and if) it files specimens in this matter. If an identification is so broad that it encompasses a wide range of products, the applicant must submit evidence that it actually uses the mark on a wide range of products to obtain registration. See In re Air Products & Chemicals, Inc., 192 USPQ 84, recon. denied 192 USPQ 157 (TTAB 1976); 37 CFR §2.61(b); TMEP §§904.01(a) and 1402.03.
Here, applicant may need to submit specimens for each of the following groups of goods:
1. Furniture, furniture shelves, and folding shelves;
2. Beds, cushions, and scratching posts for household pets;
3. Crates and kennels for pets and dogs;
4. Flower stands;
5. Infant walkers;
6. Mirrors and mirrors enhanced by electric lights;
7. Office furniture;
8. Television stands; and
9. Towel stands.
RESPONSE GUIDELINES
For this application to proceed, applicant must explicitly address each requirement in this Office action. 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.
How to respond. Click to file a response to this nonfinal Office action.
/Hunter Bayliss/
Examining Attorney
Law Office 113
571-272-6526
Hunter.Bayliss@USPTO.gov
RESPONSE GUIDANCE
