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:  November 20, 2020

 

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.

 

Summary of Issues that Applicant Must Address:

• Refusal – Section 2(d) Refusal to Register – Likelihood of Confusion
• Potential Refusal – Potential Section 2(d) Refusal to Register
• Requirement – Identification of Goods
• Requirement – Unsigned Application
• Requirement – New Drawing Required
• Requirement – Certificate of Registration Required

 

1.  Refusal – Section 2(d) Refusal to Register – 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. 0766417, 0855232, 1025591, 1208578, 1377808, 1711127, 1712999, 1746720, 3265340, 3818411, 4712665, 4871309, 4983549, 5101024, 5832215, 6055108, 6139152, and 6149114.  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. 

 

The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer.  See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993).  Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant.  TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).

 

Comparison of 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).

 

The applicant’s mark is YSL in a stylized font.

 

The mark in U.S. Registration Number 0766417 is YSL.

 

The mark in U.S. Registration Number 0855232 is YSL.

 

The mark in U.S. Registration Number 1025591 is YSL.

 

The mark in U.S. Registration number 1208578 is YSL.

 

The mark in U.S. Registration Number 1377808 is YSL PARIS.

 

The mark in U.S. Registration Number 1711127 is YSL.

 

The mark in U.S. Registration Number 1712999 is YSL.

 

The mark in U.S. Registration Number 1746720 is YSL.

 

The mark in U.S. Registration Number 3265340 is YSL.

 

The mark in U.S. Registration Number 3818411 is YSL PERFECT TOUCH plus design.

 

The mark in U.S. Registration Number 4712665 is YSL PARIS YVES SAINT LAURENT 7 AVENUE GEORGE V PARIS 8 IME plus design.

 

The mark in U.S. Registration Number 4871309 is YSL.

 

The mark in U.S. Registration Number 4983549 is YSL in a repeating pattern.

 

The mark in U.S. Registration Number 5101024 is YSL MON PARIS.

 

The mark in U.S. Registration Number 5832215 is LIBRE YSL.

 

The mark in U.S. Registration Number 6055108 is YSL MAKE IT YOURS.

 

The mark in U.S. Registration Number 6139152 is LIBRE YSL.

 

The mark in U.S. Registration Number 6149114 is YSL MON PARIS INTENSEMENT.

 

The applicant’s mark is confusingly similar to the registrants’ marks because they all include the identical wording YSL.

 

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).

 

Accordingly, because the applicant’s mark and the registrants’ marks all contain the identical wording YSL, the marks are confusingly similar.

 

Comparison of the Goods/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).

 

The applicant’s goods are, “Fabrics; bed coverings and table coverings; textile articles not included in other classes”.

 

The goods in U.S. Registration Number 0766417 are “shoes”.

 

The goods in U.S. Registration Number 0855232 are, “perfume, toilet water, bath oil, and dusting powder.”

 

The goods in U.S. Registration Number 1025591 are, “[ bubble bath, ] body lotion, aftershave lotion, after-shave balm, [ skin bronzer, ] cologne and soap.”

 

The goods in U.S. Registration Number 1208578 are, “Ladies Hosiery, Pantyhose and Socks; Children's Outerwear-Namely, Sweaters, Blouses, Shirts, Coats and Jackets, Men's Underwear, Neckties, and Scarves.”

 

The goods in U.S. Registration Number 1377808 are, “perfume”.

 

The goods in U.S. Registration Numbers 1711127 and 1712999 are, “keyholders”, “sunglasses, optical frames and cases for glasses”, “jewelry, clocks and watches”, “handbags, luggage, tote bags, briefcases, wallets, billfolds, change purses, and key fobs” and “women's and girls' apparel; namely, dresses, gowns, skirts, slacks, pants, suits, blouses, shirts, sweaters, jeans, neckwear, scarves, belts, sleepwear, underwear, lingerie, robes, camisoles, slips, brassieres, robes, swimwear, beach cover-ups, shoes, slippers, sandals, boots, gloves, hosiery, tights, coats, raincoats, jackets, capes, shawls, fur muffs and headwear; men's and boys apparel; namely, outercoats, raincoats, blazers, sportcoats, vests, suits, pants, jackets, tuxedos, shirts, jeans, sweaters, neckwear, pocket squares, pajamas, night shirts, robes, bath wraps, shoes, sandals, slippers, hosiery, socks, gloves, scarves, hats, swimwear, belts and suspenders”.

 

The goods in U.S. Registration Number 1746720 are, “cosmetics; namely, lipstick, lip liner, nail lacquer, eye make-up, foundation, face powder, concealer, blush, skin cleansers, creams and lotions.”

 

The goods in U.S. Registration Number 3265340 are, “Perfumes; eau-de-cologne, eau de toilette, deodorants for personal use; perfumery; [ essential oils for personal use; oils for cosmetic purposes; soaps; ]toiletry milks, namely, [ cleansing milks; ] skin cleansing products, namely, cleansing creams and lotions; beauty masks; cosmetics; creams; gels, lotions and cosmetic products for skin care, namely, moisturizing creams; anti-wrinkle creams; anti-wrinkle gels; [ beauty masks; cosmetic slimming preparations, namely, body creams for cellulite reduction; slimming body creams and gels for cellulite reduction; ] cosmetic suntan preparations, namely, [ creams and gels for suntan; after-sun creams and ] gels for skin care, [ pre-moistened cosmetic tissues impregnated with cosmetic lotions; ] cosmetic preparations for baths; bath and shower gels; [ bubble baths; ] creams, gels and lotions for facial care for cosmetic use; gels and lotions for skin care for cosmetic use; make-up remover, make-up products, namely, foundations, blusher, make-up powders, mascara, cosmetic pencils, eye liner pencils, eye liners, eyebrow pencils, make-up, eye shadows, blushes, nail polish, lipsticks, lip glosses, lip liner pencils; lip [ and nail balms; hair lotions, shampoos; ] shaving products, namely, [ creams and lotions; ] after-shave balms; after-shave lotions [ ; moisturizing after-shave creams; shaving soaps ]”

 

The goods in U.S. Registration Number 3818411 are, “Facial foundations”.

 

The goods in U.S. Registration Number 4712665 are, “Leather and imitation of leather goods, namely, handbags, wallets, purses, key cases in leather”.

 

The goods in U.S. Registration Number 4871309 are, “Men's, women's clothing, namely, dresses, skirts, suits, jackets, pants, shirts, tee-shirts; evening wear, namely, evening dresses, blazers; sportswear, namely, sports shirts, sport jerseys; clothing accessories, namely, scarves; belts for clothing; footwear.”

 

The goods in U.S. Registration Number 4983549 are, “spectacle cases, apparatus for recording, transmission or reproduction of data, sound or images; accessories for telephones, mobile telephones, Smartphones, video phones, tablets, personal digital assistants and MP3 players, namely, covers, cases, chargers and charging pods, adapter cases, computer cables, cases and covers for portable computers, covers, battery housings; USB flash drives and other digital recording media; photographic machines and instruments, namely, bags for cameras and photographic equipment” and “Paper, cardboard, cardboard articles, graphic prints, greeting cards, note cards, blank journal books, blank drawing books, artists' materials; printed publications, namely, catalogs, periodicals, pamphlets, newspapers, magazines, handbooks, leaflets, manuals and books in the fields of fashion and photography; printed photographs; stationery; posters; note books; pencil holders, notepads, writing pads, stationery covers for diaries, Passport holders; holders for checkbooks”, “Leather and imitations of leather, animal skins and imitation animal skins; handbags, shoulder bags, messenger bags, tote bags, luggage, wallets, purses, card cases, notecases, briefcases, attaché cases, leather diary cases, bags for sports, sling bags for travel, suitcases, trunks, travelling bags, rucksacks, shopping bags, clutch bags, pouches, vanity cases, toiletry bags sold empty, garment bags for travel, travelling sets, namely, coordinated luggage sets for travel, leather key cases; harness for animals” and “scarves”.

 

The goods in U.S. Registration Number 5101024 are, “perfume; bath and shower gels not for medical purposes; cosmetics, namely, lotions for the face, body and hands.”

 

The goods in U.S. Registration Number 5832215 are, “Perfumed soaps; perfumes; eau de cologne; toilet waters; eau de parfum; personal deodorants; cleaning and fragrancing preparations; scented body lotions and creams; essential oils”.

 

The goods in U.S. Registration Number 6055108 are, “make-up”.

 

The goods in U.S. Registration Number 6139152 are, “Perfumed soaps; perfumes; eau de cologne; toilet waters; eau de parfum; personal deodorants; cleaning and fragrancing preparations; scented body lotions and creams; essential oils.”

 

The goods in U.S. Registration Number 6149114 are, “perfumes”.

 

The applicant’s goods are related to the registrants’ goods because these types of goods travel through the same channels of trade to the same classes of purchasers.  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 fabrics and handbags, shoes, footwear, perfume, jewelry, shirts, cologne, cosmetics, makeup, 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).

 

Accordingly, because the marks are confusingly similar and the evidence demonstrates that the goods are related, confusion as to source is likely and registration is refused under Section 2(d) of the Trademark Act.

 

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

 

2.  Potential Refusal – Potential Section 2(d) Refusal to Register:

The filing dates of pending U.S. Application Serial Nos. 79293790, 88237608, and 90002184 precede applicant’s filing date.  See attached referenced applications.  If one or more of the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s).  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 applications.

 

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 marks in the referenced applications.  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.

 

Applicant must respond to the requirement(s) set forth below.

 

3.  Requirement – Identification of Goods:

A written application must specify the particular goods and/or services on or in connection with which the applicant uses, or has a bona fide intention to use, the mark in commerce.  15 U.S.C. §§1051(a)(2)  and 1051(b)(2); 37 C.F.R. §2.32(a)(6).  To "specify" means to name in an explicit manner.  The identification should set forth common names, using terminology that is generally understood.  The identification of goods and/or services must be specific, definite, clear, accurate, and concise.   See In re Societe Generale des Eaux Minerales de Vittel S.A., 1 USPQ2d 1296 (TTAB 1986) , rev’d on other grounds, 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987); The Procter & Gamble Co. v. Economics Laboratory, Inc., 175 USPQ 505 (TTAB 1972), modified without opinion, 498 F.2d 1406, 181 USPQ 722 (C.C.P.A. 1974); In re Cardinal Laboratories, Inc., 149 USPQ 709 (TTAB 1966) ; California Spray-Chemical Corp. v. Osmose Wood Preserving Co. of America, Inc., 102 USPQ 321 (Comm’r Pats. 1954); Ex parte The A.C. Gilbert Co., 99 USPQ 344 (Comm’r Pats. 1953).  TMEP §1402.01.

 

The wording “fabrics” in the identification of goods must be clarified because it is indefinite.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  Please clarify the goods applicant offers by identifying the goods by common commercial or generic name and classifying appropriately.  For example, applicant may state, “fabric for footwear” or “polyester fabrics” in Class 024, if accurate.

 

The wording “bed coverings and table coverings” in the identification of goods must be clarified because it is too broad and could include goods in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  For example, “fitted table covers” are properly classified in International Class 020, however, “plastic table covers” are properly classified in International Class 024.  Additionally, applicant may state “bed covers” in International Class 024, if accurate.  Please clarify the goods for the record and classify appropriately. 

 

The wording “textile articles not included in other classes” in the identification of goods must be clarified because it is unclear what goods the applicant is providing.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  Please clarify the goods for the record and classify appropriately. 

 

Applicant may substitute the following wording, if accurate: 

 

International Class 020:

Fitted table covers.

 

International Class 024:

Polyester fabrics; bed covers and plastic table covers; textile articles not included in other classes, namely, banners of textile.

 

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

 

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.

 

Requirements for a Multiple Class Application:

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 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 fee(s) already paid (view the USPTO’s current fee schedule).  The application identifies goods and/or services that are classified in at least two classes; however, applicant submitted a fee(s) sufficient for only one class.  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 Sections 1(b) and 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.

 

The fee for adding classes to a TEAS Standard application is $275 per class.  See 37 C.F.R. §2.6(a)(1)(iii).  For more information about adding classes to an application, see the Multiple-class Application webpage.

 

4.  Requirement – Unsigned Application:

The application was unsigned, resulting in the application not being properly verified.  See TMEP §804.  Applicant must properly sign and therefore verify the application in an affidavit or signed declaration under 37 C.F.R. §2.20.  See 37 C.F.R. §§2.2(n), 2.33(a), (b)(2)-(c), 2.34(a)(2), (a)(3)(i), (a)(4)(ii); TMEP §804.02. 

 

The following statements must be verified:  That applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; that applicant believes applicant is entitled to use the mark in commerce on or in connection with the goods or services specified in the application; that to the best of the signatory’s knowledge and belief, no other persons, except, if applicable, concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services of such other persons, to cause confusion or mistake, or to deceive; and that the facts set forth in the application are true.  37 C.F.R. §§2.33(b)(2), (c), 2.34(a)(2), (a)(3)(i), (a)(4)(ii). 

 

For more information about the verified statement and instructions on providing one using the online Trademark Electronic Application System (TEAS) response form, see the Verified statement webpage.

 

5.  Requirement  - New Drawing Required:

The drawing is not acceptable because it will not create a high quality image when reproduced.  See TMEP §807.04(a).  Specifically, the drawing is blurry and contains a large amount of stippling around the mark that does not appear to be part of the mark.  A clear drawing of the mark is an application requirement.  37 C.F.R. §2.52. 

 

Therefore, applicant must submit a new drawing showing a clear depiction of the mark.  All lines must be clean, sharp and solid, and not fine or crowded.  37 C.F.R. §§2.53(c), 2.54(e); TMEP §§807.05(c), 807.06(a).  Additionally, the USPTO will not accept a new drawing in which there are amendments or changes that would materially alter the applied-for mark.  37 C.F.R. §2.72; see TMEP §§807.13 et seq., 807.14 et seq.

 

For more information about drawings and instructions on how to submit a drawing, see the Drawing webpage.

 

6  Requirement – Certificate of Registration Required:

The application specifies a basis under Trademark Act Section 44(e); however, it does not include a copy of a foreign registration.  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, the 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.

 

A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in the applicant’s country of origin.  TMEP §1004.01.  If an applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, the applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to the applicant’s country of origin.  TMEP §1016.

 

Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin.  If the foreign registration is not written in English, applicant must also provide an English translation.  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).

 

7.  Advisory – Assistance:

Please email the assigned trademark examining attorney at colleen.dombrow@uspto.gov 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. 

 

PLEASE NOTE:  If applicant requires assistance navigating the online response form, applicant should contact the Trademark Assistance Center at 571-272-9250.

 

8.  Advisory – Response Guidelines:

Response guidelines.  For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  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.    

 

 

/Colleen Dombrow/

Trademark Attorney

Law Office 101

571-272-8262

colleen.dombrow@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 November 20, 2020 for

U.S. Trademark Application Serial No. 90172158

 

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. 

 

 

/Colleen Dombrow/

Trademark Attorney

Law Office 101

571-272-8262

colleen.dombrow@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 November 20, 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.”