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:  January 20, 2021

 

 

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.

 

Specifically, applicant must address the following issues:

 

·       Section 2(d) refusal; and

·       Identification and classification requirement.

 

 

Refusal – Section 2(d) Likelihood of Confusion

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 5713942, 4608258, and 2646373.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties.  See 15 U.S.C. §1052(d).  Likelihood of confusion is determined 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) (called the “du Pont factors”).  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017).  Any evidence of record related to those factors need be considered; however, “not all of the DuPont factors are relevant or of similar weight in every case.”  In re Guild Mortg. Co., 912 F.3d 1376, 1379, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019) (quoting In re Dixie Rests., Inc., 105 F.3d 1405, 1406, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997)).

 

Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis:  (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services.  See 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)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01. 

 

            Comparing the Marks

 

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 Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).

 

Here, applicant’s mark is “ONELINK” in standard characters.

 

Registrants’ marks are:

 

• 5713942 – “1LINK” in standard characters;
• 4608258 – “ONE LINK. ONE PASSWORD. FAST RATES” in standard characters; and
• 2646373 – “ONELINK” in stylized characters.

 

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 Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).  Greater weight is often given to this dominant feature when determining whether marks are confusingly similar.  See In re Detroit Athletic Co., 903 F.3d at 1305, 128 USPQ2d at 1050 (citing In re Dixie Rests., 105 F.3d at 1407, 41 USPQ2d at 1533-34).

 

In all the registrations, the most dominant portion of the marks is the phonetic equivalent of applicant’s mark.  That the marks may display this phonetically equivalent portion differently does not change the sound of this portion of the marks.  Similarity in sound alone may be sufficient to support a finding that the compared marks are confusingly similar.  In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007) (citing Krim-Ko Corp. v. Coca-Cola Bottling Co., 390 F.2d 728, 732, 156 USPQ 523, 526 (C.C.P.A. 1968)); TMEP §1207.01(b)(iv). 

 

The compared portions of the marks are identical except for a slight difference in appearance between the marks.  Applicant’s mark is presented as a compound word in standard characters, may means the mark 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).  In U.S. Registration No. 5713942, the number part of the compound word is displayed numerically rather than literally, but this does not change the way the mark would be perceived or pronounced.  In U.S. Registration No. 4608258, there is a space between the two syllables, but this blank space would have no source-indicating significance and would not change the meaning of the wording or how it would be pronounced.  In U.S. Registration No. 2646373, the wording is presented in stylized characters, but the stylization is minimal, consisting of block-style printing wherein two letters as in lowercase while the others are in uppercase.  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 word portion 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”).

 

An analysis of the shared portions of the marks shows that these portions of the marks are identical in sound and virtually identical in appearance, and are thus confusingly similar for the purposes of determining likelihood of confusion.  See, e.g., Seaguard Corp. v. Seaward Int’l, Inc., 223 USPQ 48, 51 (TTAB 1984) (“[T]he marks ‘SEAGUARD’ and ‘SEA GUARD’ are, in contemplation of law, identical [internal citation omitted].”); In re Best W. Family Steak House, Inc., 222 USPQ 827, 827 (TTAB 1984) (“There can be little doubt that the marks [BEEFMASTER and BEEF MASTER] are practically identical”); Stock Pot, Inc., v. Stockpot Rest., Inc., 220 USPQ 52, 52 (TTAB 1983), aff’d 737 F.2d 1576, 222 USPQ 665 (Fed. Cir. 1984) (“There is no question that the marks of the parties [STOCKPOT and STOCK POT] are confusingly similar.  The word marks are phonetically identical and visually almost identical.”). 

 

It is significant that the shared portion of the marks is the first or only portion part of each mark.  Consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark.  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) (finding similarity between “VEUVE ROYALE” and two “VEUVE CLICQUOT” marks in part because “VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876, 23 USPQ2d 1698, 1700 (Fed Cir. 1992) (finding similarity between “CENTURY 21” and “CENTURY LIFE OF AMERICA” in part because “consumers must first notice th[e] identical lead word”); see also In re Detroit Athletic Co., 903 F.3d 1297, 1303, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words 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).

 

Thus, when comparing the marks as a whole, the overall impression is that of highly similar marks.

 

            Comparing the Goods and/or Services

 

The compared goods and/or services need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i).  They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).

 

Consumers are likely to be confused by the use of similar marks on or in connection with goods and with services featuring or related to those goods.  TMEP §1207.01(a)(ii); see In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1051 (Fed. Cir. 2018) (finding retail shops featuring sports team related clothing and apparel related to various clothing items, including athletic uniforms); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988) (finding retail grocery and general merchandise store services related to furniture); In re United Serv. Distribs., Inc., 229 USPQ 237 (TTAB 1986) (finding distributorship services in the field of health and beauty aids related to skin cream); In re Phillips-Van Heusen Corp., 228 USPQ 949 (TTAB 1986) (finding various items of men’s, boys’, girls’ and women’s clothing related to restaurant services and towels); Steelcase Inc. v. Steelcare Inc., 219 USPQ 433 (TTAB 1983) (finding refinishing of furniture, office furniture, and machinery related to office furniture and accessories); Mack Trucks, Inc. v. Huskie Freightways, Inc., 177 USPQ 32 (TTAB 1972) (finding trucking services related to motor trucks and buses).

 

Here, applicant’s goods are listed in International Class 009 as:

 

Computer software and computer applications; Downloadable software applications; Software for payment processing services; Software for electronic payment processing and electronic mobile payment; Downloadable software in the field of payment processing; Downloadable software to facilitate electronic mobile payments, electronic invoicing, text-to-pay transactions, and money management in the field of financial transactions; Downloadable software to enable consumers to make payments and merchants to accept payments by way of text messages using short messaging systems (SMS) and multimedia messaging services (MMS) for text-to-pay transactions, credit card payments, automated clearing housing (ACH) payments, payments drawn on checking accounts, and cryptocurrency payments; Downloadable mobile applications to facilitate electronic mobile payments, electronic invoicing, text-to-pay transactions, and money management in the field of financial transactions; Downloadable mobile payment applications to enable consumers to make payments and merchants to accept payments by way of text messages using short messaging systems (SMS) and multimedia messaging services (MMS) for text-to-pay transactions, credit card payments, automated clearing housing (ACH) payments, payments drawn on checking accounts, and cryptocurrency payments; Data retrieved electronically from the internet, namely, downloadable databases to facilitate electronic mobile payments, electronic invoicing, text-to-pay transactions, and money management in the field of financial transactions; Electronic databases in the fields of electronic mobile payments, electronic invoicing, text-to-pay transactions, and money management recorded on computer media.

 

The Registrant in U.S. Registration No. 5713942, the registrant lists “On-line banking services” in International Class 036.  Attached evidence shows that banking services involve transferring money and conducting financial transactions.  Thus, the services provided by the registrant are the very services that are enabled through the applicant’s software. 

 

The trademark examining attorney has attached evidence from the USPTO’s X-Search database consisting of a number of third-party marks registered for use in connection with the same or similar goods and/or services as those of both applicant and registrant in this case.  This evidence shows that the goods and/or services listed therein, namely online banking services and software that enables monetary transactions, are of a kind that may emanate from a single source under a single mark.  See In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018) (citing In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)); TMEP §1207.01(d)(iii).

 

The registrant in U.S. Registration No. 4608258 lists “Insurance and financial information and consultancy services; Insurance services, providing premium rate quotes via on-line, telephone and mail means.”  Registrant is providing financial information and financial consultancy.  Applicant is providing databases that contain financial information and software that enables financial transactions.  As such, the information and consultancy provided by the registrant would include information and consultancy regarding the very transactions enabled by the applicant and would involve information that would likely be contained on the databases provided by the applicant.  Accordingly, the consumers of the parties’ goods and services would overlap. 

 

The registrant in U.S. Registration No. 2646373 lists “computer program for use by schools and students in processing, monitoring, and controlling the educational loan and financial aid delivery process” in International Class 009 and “providing educational loan guaranty information via the global computer network” in International Class 036.  As applicant’s software processes financial transactions, those transactions would include the financial transactions related to educational loans and financial aid that are processed by registrant’s software.  eHere

 

 

When analyzing an applicant’s and registrant’s goods and/or services for similarity and relatedness, that determination is based on the description of the goods and/or services in the application and registration at issue, not on extrinsic 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 this case, the software functions in the application would include software functions in the registration.  Therefore, it is presumed that the channels of trade and class(es) of purchasers are the same for these goods and/or services.  See Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1372, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)).  Thus, applicant’s and registrant’s goods and/or services are related.  

 

Thus, a comparison of the goods and services shows that they are highly related.

 

            Conclusion

 

In sum, for the reasons outlined above, applicant’s mark is refused registration based on a likelihood of confusion with the cited mark(s).  Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

 

If applicant responds to the refusal(s), applicant must also respond to the requirement set forth below.

 

Requirement – Identification and Classification

All identifications must be precise and identify the goods and/or services with particularity using common or commercial names.  TMEP §1402.01. 

            Current Identification

 

Applicant’s current identification reads (applicant should note that the wording requiring amendment, as discussed further below, has been highlighted in bold font):

 

International Class 009:  Computer software and computer applications; Downloadable software applications; Software for payment processing services; Software for electronic payment processing and electronic mobile payment; Downloadable software in the field of payment processing; Downloadable software to facilitate electronic mobile payments, electronic invoicing, text-to-pay transactions, and money management in the field of financial transactions; Downloadable software to enable consumers to make payments and merchants to accept payments by way of text messages using short messaging systems (SMS) and multimedia messaging services (MMS) for text-to-pay transactions, credit card payments, automated clearing housing (ACH) payments, payments drawn on checking accounts, and cryptocurrency payments; Downloadable mobile applications to facilitate electronic mobile payments, electronic invoicing, text-to-pay transactions, and money management in the field of financial transactions; Downloadable mobile payment applications to enable consumers to make payments and merchants to accept payments by way of text messages using short messaging systems (SMS) and multimedia messaging services (MMS) for text-to-pay transactions, credit card payments, automated clearing housing (ACH) payments, payments drawn on checking accounts, and cryptocurrency payments; Data retrieved electronically from the internet, namely, downloadable databases to facilitate electronic mobile payments, electronic invoicing, text-to-pay transactions, and money management in the field of financial transactions; Electronic databases in the fields of electronic mobile payments, electronic invoicing, text-to-pay transactions, and money management recorded on computer media.

 

The identification is unacceptable as presently worded because certain goods and/or services are worded indefinitely, need clarification and/or have been misclassified. In the identification, applicant must use the common commercial or generic names for the goods and/or services, be all-inclusive, as complete and specific as possible, and avoid the use of indefinite words and phrases.  If applicant chooses to use indefinite terms, then such terms must be followed by the word "namely" and a list of the specific goods and/or services identified by their common commercial or generic names.  TMEP §§1402.01 and 1402.03(a).

 

Specifically, in addition to the issues identified below, the identification for software and applications in International Class 009 is indefinite and too broad and must be clarified to specify (1) the purpose or function of the software and its content or field of use, if content- or field- specific; and (2) whether its format is downloadable, recorded, or online non-downloadable.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a).  Downloadable and recorded goods are in International Class 009, whereas providing their temporary, online non-downloadable use is a service in International Class 042.  See TMEP §1402.03(d).   

 

The USPTO requires such specificity in order for a trademark examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks.  See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1402.03(d).

 

Similarly, the databases must indicate the subject matter of the databases, not merely what the databases may be used for. 

 

            Suggested Amendment

 

Applicant may adopt the following identification, if accurate (applicant should note that the suggested amended language appears in bold font, and that the applicant must supply the requisite information detailed within the brackets {} and then delete the brackets and the informational matter within):  

 

International Class 009:  ______ {specify “Recorded” or “Downloadable”} computer software and computer applications for ______ {specify the function and subject matter of the software, e.g., processing electronic payments at candy kiosks}; Downloadable software applications for ______ {specify function and subject matter, e.g., calculating taxes}; ______ {specify “Recorded” or “Downloadable”} software for payment processing services, namely, software that _______ {as subject matter of software has been stated, the function of the software must be made clear, e.g., processes electronic payments, tracks payment processing fraud}; ______ {specify “Recorded” or “Downloadable”} software for electronic payment processing and electronic mobile payment; Downloadable software in the field of payment processing, namely, software that ______ {specify function of the software, e.g., divides tip payments among employee accounts}; Downloadable software to facilitate electronic mobile payments, electronic invoicing, text-to-pay transactions, and money management in the field of financial transactions; Downloadable software to enable consumers to make payments and merchants to accept payments by way of text messages using short messaging systems (SMS) and multimedia messaging services (MMS) for text-to-pay transactions, credit card payments, automated clearing housing (ACH) payments, payments drawn on checking accounts, and cryptocurrency payments; Downloadable mobile applications to facilitate electronic mobile payments, electronic invoicing, text-to-pay transactions, and money management in the field of financial transactions; Downloadable mobile payment applications to enable consumers to make payments and merchants to accept payments by way of text messages using short messaging systems (SMS) and multimedia messaging services (MMS) for text-to-pay transactions, credit card payments, automated clearing housing (ACH) payments, payments drawn on checking accounts, and cryptocurrency payments; Data retrieved electronically from the internet, namely, downloadable databases in the field of ______ {specify field, e.g., electronic payment processing} used to facilitate electronic mobile payments, electronic invoicing, text-to-pay transactions, and money management in the field of financial transactions; Electronic databases in the fields of electronic mobile payments, electronic invoicing, text-to-pay transactions, and money management recorded on computer media.

 

International Class 042:  Providing temporary use of online non-downloadable software for ______ {specify the function and subject matter of the software, e.g., processing electronic payments at candy kiosks}; Providing temporary use of online non-downloadable software for payment processing services, namely, software that _______ {as subject matter of software has been stated, the function of the software must be made clear, e.g., processes electronic payments, tracks payment processing fraud}; Providing temporary use of online non-downloadable software for electronic payment processing and electronic mobile payment.

 

            Limitation on Amendments

 

While an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  37 C.F.R. Section 2.71(a); TMEP §1402.06.   Trademark Rule 2.71(a), 37 C.F.R. §2.71(a), restricts amendments to the identification of goods or services as follows, “The applicant may amend the application to clarify or limit, but not to broaden, the identification of goods and/or services.”  This rule applies to all applications.

 

Therefore, the applicant may not amend to include any goods or services that are not within the scope of goods or service set forth in the present identification.

 

For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

 

            Adding Classes

 

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

 

(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 fee(s) already paid (view the USPTO’s current fee schedule).  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 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).

 

For an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.

 

 

Advisory – Potential Refusal

 

The filing date of pending U.S. Application Serial No. 88610754 precedes applicant’s filing date.  See attached referenced application.  If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application.

 

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.

 

 

Response Guidelines

 

For this application to proceed toward registration, applicant must explicitly address each refusal and/or requirement raised in this Office action.  If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register.  Applicant may also have other options for responding to a refusal and should consider such options carefully.  To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements.

 

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 issues 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.    

 

 

/Andrea R. Hack/

Andrea Hack

Examining Attorney

Law Office 108

571-272-5413

andrea.hack@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 January 20, 2021 for

U.S. Trademark Application Serial No. 90166140

 

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. 

 

 

/Andrea R. Hack/

Andrea Hack

Examining Attorney

Law Office 108

571-272-5413

andrea.hack@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 January 20, 2021, 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.”