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:  February 04, 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.

 

SUMMARY OF ISSUES

• Advisory – Prior Pending Applications
• Refusal – Section 2(d) Likelihood of Confusion
• Requirement – Amended Mark Description
• Requirement – Foreign Certificate of Registration

 

PRIOR-FILED APPLICATIONS

 

The filing dates of pending U.S. Application Serial Nos. 86970282 (BIRDIE) and 90092953 (HELLO BIRDIE) 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.

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

 

The stated refusal refers to International Classes 9 and 42 only, as set forth in further detail below, and does not bar registration in the other class.

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 6119280 (BIRDIE), 5925460 (BIRDI, INC), 5925461 (BIRDI, INC. FROM SOLUTIONS TO SERVICE) and 4370608 (BIRDI & ASSOCIATES, INC. FROM SOLUTIONS TO SERVICE).  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. 

 

Applicant seeks to register the mark BIRDIE and design for, relevantly “Downloadable computer software for use in the digital data collection and analysis of consumers' opinions and experiences in real-time, generating insights and dashboards to improve customer service, marketing, and communications, consumer insights, and product development, which can be combined with customer supplied, anonymized data to provide a 360-degree system of intelligence.; Downloadable mobile applications for use in the digital data collection and analysis of consumers' opinions and experiences in real-time, generating insights and dashboards to improve customer service, marketing, and communications, consumer insights, and product development, which can be combined with customer supplied, anonymized data to provide a 360-degree system of intelligence.; Recorded computer software for use in the digital data collection and analysis of consumers' opinions and experiences in real-time, generating insights and dashboards to improve customer service, marketing, and communications, consumer insights, and product development, which can be combined with customer supplied, anonymized data to provide a 360-degree system of intelligence” in Class 9 and “Computer software consulting; Computer software rental; Consulting services in the field of software as a service (SAAS); Developing computer software; Installation of computer software; Maintenance of computer software; Updating of computer software” in Class 42.

 

Registration No. 6119280 is for the mark BIRDIE in standard characters for “Providing access for users to online database containing information concerning different types of businesses, places and service providers” in Class 38 and “Providing an interactive website featuring technology that allows users to post, search, and view ratings, reviews and recommendations regarding third-party food and beverage providers through interacting with other users as well as through searching by keywords and various filters” in Class 42, and is owned by ROSIEQ, LLC.

 

Registration No. 5925460 is for the mark BIRDI, INC in standard characters for, most relevantly, “computer system analysis; Computer systems integration services; computer project management in the field of computer software and computer systems, namely, computer systems analysis; Computer security consultation in the field of computer security and IT project management; Computer disaster recovery planning” in Class 42, and is owned by Birdi, Inc.

 

Registration No. 5925461 is for the mark BIRDI, INC. FROM SOLUTIONS TO SERVICE and Design for, most relevantly, “computer system analysis; Computer systems integration services; computer project management in the field of computer software and computer systems, namely, computer systems analysis; Computer security consultation in the field of computer security and IT project management; Computer disaster recovery planning” in Class 42, and is owned by Birdi, Inc.

 

Registration No. 4370608 is for the mark BIRDI & ASSOCIATES, INC. FROM SOLUTIONS TO SERVICE and Design for, most relevantly, “computer system analysis” in Class 42, and is owned by Birdi, Inc.

 

Similarity 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).

 

In this instance, applicant’s mark BIRDIE and Design creates a confusingly similar commercial impression as the registered marks BIRDIE, BIRDI, INC., BIRDI, INC. FROM SOLUTIONS TO SERVICES, and BIRDI & ASSOCIATES, INC FROM SOLUTIONS TO SERVICE. 

 

Registration No. 6119280 (BIRDIE)

 

In a likelihood of confusion determination, the marks in their entireties are compared for similarities in appearance, sound, connotation, and commercial impression.  In re i.am.symbolic, llc, 866 F.3d 1315, 1323, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017); 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)); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b)-(b)(v). 

 

In the present case, applicant’s mark is BIRDIE and bird design and registrant’s mark is BIRDIE in standard characters.  The word portions of these marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.”  In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017).  Additionally, because the word portions of the mark are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods and/or services.  Id.

 

Further, the design in applicant’s mark is that of a stylized bird, which does not obviate the similarity created by use of the identical word BIRDIE.  Instead, it reinforces the identical meaning and commercial impression of the term, which means, “a small bird.”  See the attached dictionary evidence.

 

Therefore, the marks are confusingly similar, and consumers encountering the marks in the same commercial channels are likely to confuse the marks or at least mistake the underlying sources of closely-related goods and/or services provided under the marks. 

 

Registration Nos. 5925460, 5925461, and 4370608 (Birdi, Inc. Marks)

 

Applicant’s mark BIRDIE and bird design is similar in commercial impression to BIRDI, INC., BIRDI, INC. FROM SOLUTIONS TO SERVICES, and BIRDI & ASSOCIATES, INC FROM SOLUTIONS TO SERVICE.  BIRDIE and BIRDI are phonetic equivalents; both “i” and “ie” – particularly at the end of a word – are commonly pronounced as a long “e” sound.  BIRDIE and BIRDI are the dominant element of the marks; in applicant’s mark it comprises the entirety of the wording.  In Registration Nos. 5925461 and 4370608, BIRDI is the first word element, positioned in the center and in the largest and most prominent type.  Further, consumers are more likely to retain and recall the word elements of marks comprising both words and designs. 

 

The additional wording “ASSOCIATES” and “INC” are disclaimed in the respective cited registrations these entity indicators provide little source-identifying significance and do not change the overall appearance or meaning of the mark.  The slogan FROM SOLUTIONS TO SERVICE in registration Nos. 5925461 and 4370608 does not obviate the confusing similarity created by the dominant and phonetically equivalent term BIRDI; as set forth above BIRDI is the dominant element of the mark due to its prominence, and consumers are more likely to remember a house mark as compared to a slogan or tagline.  Finally, Registration No. 5925460 is in standard characters, which means it may be displayed in any form or stylization, including similar to that of applicant’s mark.  Compared in their entireties, the marks are confusingly similar.

 

The marks incorporate the similar terms BIRDIE and BIRDI.  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).

 

The terms BIRDIE and BIRDI in the marks are essentially phonetic equivalents and thus sound similar.  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). 

 

 

BIRDIE and BIRDI are the dominant elements in applicant’s and registrant’s marks.  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).

 

Marks must be compared in their entireties and should not be dissected; however, a trademark examining attorney may weigh the individual components of a mark to determine its overall commercial impression.  In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (“[Regarding the issue of confusion,] there is nothing improper in stating that . . . more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties.” (quoting In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985)). 

 

When evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services.  In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii).  Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed.  In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).

 

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 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”).

 

Therefore, the marks are confusingly similar, and consumers encountering the marks in the same commercial channels are likely to confuse the marks or at least mistake the underlying sources of closely-related goods and/or services provided under the marks. 

 

Relatedness of the Goods and Services

 

The goods and/or services are compared to determine whether they are similar, commercially related, or travel in the same trade channels.  See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).

 

Registration No. 6119280 (BIRDIE)

 

At issue are applicant’s goods in Class 9, namely, “Downloadable computer software for use in the digital data collection and analysis of consumers' opinions and experiences in real-time, generating insights and dashboards to improve customer service, marketing, and communications, consumer insights, and product development, which can be combined with customer supplied, anonymized data to provide a 360-degree system of intelligence.; Downloadable mobile applications for use in the digital data collection and analysis of consumers' opinions and experiences in real-time, generating insights and dashboards to improve customer service, marketing, and communications, consumer insights, and product development, which can be combined with customer supplied, anonymized data to provide a 360-degree system of intelligence.; Recorded computer software for use in the digital data collection and analysis of consumers' opinions and experiences in real-time, generating insights and dashboards to improve customer service, marketing, and communications, consumer insights, and product development, which can be combined with customer supplied, anonymized data to provide a 360-degree system of intelligence.”

 

Registrant’s services are “Providing access for users to online database containing information concerning different types of businesses, places and service providers” in Class 38 and “Providing an interactive website featuring technology that allows users to post, search, and view ratings, reviews and recommendations regarding third-party food and beverage providers through interacting with other users as well as through searching by keywords and various filters” in Class 42.

 

Applicant’s goods, identified as software for use in collecting and analyzing customer and consumer input, are closely related to and complementary to registrant’s services, which provide access and a platform for customers and consumers to provide such input.

 

The attached Internet evidence, consisting of third parties Merchant Circle, Yelp, and Zomato, establishes that the same entity commonly manufactures, produces, or provides the relevant goods and/or services and markets the goods and/or services under the same mark, the relevant goods and/or services are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use, and the goods and/or services are similar or complementary in terms of purpose or function.  Specifically, the same entities commonly provide both platforms and access for consumer reviews and customer input as well as software for collection and analysis of that data.  Thus, applicant’s and registrant’s goods and/or services are considered related for likelihood of confusion purposes.  See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).

 

Registration Nos. 5925460, 5925461, and 4370608 (Birdi, Inc. Marks)

 

At issue are applicant’s services in Class 42, namely, “Computer software consulting; Computer software rental; Consulting services in the field of software as a service (SAAS); Developing computer software; Installation of computer software; Maintenance of computer software; Updating of computer software.”

 

Registrant’s services are, most relevantly, “computer system analysis; Computer systems integration services; computer project management in the field of computer software and computer systems, namely, computer systems analysis; Computer security consultation in the field of computer security and IT project management; Computer disaster recovery planning” in Class 42.

 

The attached Internet evidence, consisting of screenshots from third parties Apps Associates, Aventis, and North Blue Networks, establishes that the same entity commonly provides the relevant services and markets the services under the same mark, the relevant services are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use, and the services are similar or complementary in terms of purpose or function.  Specifically, the same entities commonly provide software-related services including consulting, rental, development, installation, maintenance, updating, system analysis, systems integration, security consulting, and disaster recovery planning.  Thus, applicant’s and registrant’s goods and/or services are considered related for likelihood of confusion purposes.  See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).

 

Conclusion

 

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).

 

Therefore, upon encountering BIRDIE and design used in connection with applicant’s software and computer and software services, BIRDIE used in connection with a website and access to provide user reviews, and BIRDI, INC, BIRDI, INC. FROM SOLUTIONS TO SERVICES, and BIRDI & ASSOCIATES, INC FROM SOLUTIONS TO SERVICE used in connection with computer and software services, consumers are likely to be confused and mistakenly believe that the respective goods and/or services emanate from a common source.

 

Thus, the mark 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.  However, if applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.

 

AMENDED DESCRIPTION OF MARK REQUIRED

 

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, including where each color appears in the literal and design elements in 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 following description is suggested, if accurate:  The mark consists of the stylized design of a letter “B” in light blue resembling a lateral view of a bird's body in white with violet, dark blue, and light blue gradient arcs at the head and breast, facing the right hand side. There is a geometric oval made of arc shapes resembling a wing in gradient violet, dark blue, and light blue pointing to the left hand side. The stylized design is followed by the word “BIRDIE” in black in lowercase font.  The remaining white represents background and transparent areas and is not part of the mark.

 

FOREIGN REGISTRATION CERTIFICATE REQUIRED

 

The application specifies Trademark Act Section 44(d) as the sole filing basis and indicates that applicant intends to rely on Section 44(e) as a basis for registration; however no copy of a foreign registration was provided.  See 15 U.S.C. §1126(d), (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, 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.

 

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, the 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 is not yet available, applicant should inform the trademark examining attorney that the foreign application is still pending and request that the U.S. application be suspended until a copy of the foreign registration is available.  TMEP §§716.02(b), 1003.04(a).

 

If applicant cannot satisfy the requirements of the Section 44(e) basis, applicant may amend the basis to Section 1(a) or 1(b), if applicant can satisfy the requirements for the new basis.  See 15 U.S.C. §§1051(a)-(b), 1126(e); TMEP §806.03.  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), 806.03(h).  

 

 

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

 

 

/Alina Morris/

Examining Attorney, Law Office 117

United States Patent and Trademark Office

571-272-2256

alina.morris@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 February 04, 2021 for

U.S. Trademark Application Serial No. 90185208

 

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. 

 

 

/Alina Morris/

Examining Attorney, Law Office 117

United States Patent and Trademark Office

571-272-2256

alina.morris@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 February 04, 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.”