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:  April 07, 2021

 

This Office action is in response to Applicant’s communication filed on March 16, 2021.

 

MATERIAL ALTERATION OF DRAWING

Applicant has requested that the drawing of the mark be amended.  The original drawing shows the mark as a stylized letter “V” over a phoenix design, above the stylized wording “VANQUISH”; the amended drawing shows the mark as the same wording “V VANQUISH” and phoenix design, with an additional wording “ACTIVEWEAR”. 

 

An amendment to a mark will not be accepted if the change would materially alter the mark in the initial application.  37 C.F.R. §2.72; In re Who? Vision Sys., Inc., 57 USPQ2d 1211 (TTAB 2000) (holding proposed amendment of TACILESENSE to TACTILESENSE to be material alteration); In re CTB Inc., 52 USPQ2d 1471 (TTAB 1999) (holding proposed amendment of TURBO and design to typed word TURBO to be material alteration); TMEP §807.14. 

 

For example, if republication of the amended mark would be necessary in order to provide proper notice of the mark to third parties for opposition purposes, then the mark has been materially altered and the amendment is not permitted.  In re Who? Vision Sys. Inc., 57 USPQ2d at 1218.  “The modified mark must contain what is the essence of the original mark, and the new form must create the impression of being essentially the same mark.”  In re Hacot-Columbier, 105 F.3d 616, 620, 41 USPQ2d 1523, 1526 (Fed. Cir. 1997) (quoting Visa Int’l Serv. Ass’n v. Life Code Sys., Inc., 220 USPQ 740, 743 (TTAB 1983)); see In re Nationwide Indus. Inc., 6 USPQ2d 1882, 1885 (TTAB 1988); TMEP §807.14.

 

The Office determines whether a proposed amendment materially alters a mark by comparing the proposed amended mark with the mark in the drawing filed with the original application.  TMEP §807.14(d). 

 

In the present case, the proposed amendment to the mark is refused because it would result in a material alteration of the mark depicted in the original application.  TMEP §807.17; see 37 C.F.R. §2.72.  Specifically, the proposed amendment would materially alter the mark in the initial application because the added wording “ACTIVEWEAR” creates a commercial impression that is materially different from the drawing as filed with the application.

 

Accordingly, the proposed amendment will not be entered and thus, the previously acceptable drawing of the mark will remain operative.  TMEP §807.17.  Applicant must respond by arguing in favor of the proposed amendment and/or requesting that the proposed amended drawing be withdrawn.  See TMEP §§714.05(a), 807.17.

 

If Applicant responds using the Trademark Electronic Application System (TEAS) response to Office action form, Applicant may request withdrawal of the proposed amended drawing by (1) answering “yes” to the TEAS response form wizard question for making a “miscellaneous statement;” (2) checking the box for “miscellaneous statement;” and (3) inserting in the free form text field wording indicating Applicant’s request to withdraw the amended drawing, for example: “Applicant requests withdrawal of the proposed amended drawing submitted on March 9, 2021.” 

 

DRAWING – COLOR CLAIM AND MARK DESCRIPTION

In its response, Applicant claimed black and white colors, but has not provided the required color location statement.  Applications for color marks must include both a list of the colors that are claimed as a feature of the mark and a description of where the colors appear in the mark.  37 C.F.R. §2.52(b)(1); see TMEP §§807.07(a) et seq.  Generic color names must be used to describe the colors in the mark, e.g., magenta, yellow, turquoise.  TMEP §807.07(a)(i)-(a)(ii).  Also, Applicant must submit an amended description of the mark because the current one is incomplete and does not describe all the significant aspects of the mark.  37 C.F.R. §2.37; see TMEP §§808.01, 808.02.  Descriptions must be accurate and identify all the literal and design elements in the mark.  See 37 C.F.R. §2.37; TMEP §§808 et seq. 

 

Therefore, Applicant must provide an accurate and complete mark description and clarify whether color is claimed as a feature of the mark by satisfying one of the following:

 

(1)             If color is not a feature of the proposed mark, Applicant must withdraw the color claim and “The mark consists of a stylized letter “V” superimposed over a phoenix design.  Below this appears the wording “VANQUISH” in stylized font, with the design of a crown that opens at the top appearing in the place of the tittle of the letter “I” thereof.”  37 C.F.R. §2.72; see TMEP §§807.07(a)(i), 807.14.; or

(2)             If color is a feature of the proposed mark, Applicant must submit both a statement listing all of the colors that are claimed as a feature of the mark and a statement describing where the colors appear in the mark.  37 C.F.R. §2.52(b)(1); TMEP §807.07(a).  The following format is suggested:  “The colors black and white are claimed as a feature of the mark.  The mark consists of a stylized letter “V” superimposed over a phoenix design.  Below this appears the wording “VANQUISH” in stylized font, with the design of a crown that opens at the top appearing in the place of the tittle of the letter “I” thereof.  The entire mark is in black color against a white background, except for the letter “V” superimposed over the phoenix design, which appears in white color with a black outline.”

 

See TMEP §807.07(b).

 

REFUSAL MAINTAINED: The ornamental refusal from the previous Office action is maintained and continued.

 

RESPONSE TO OFFICE ACTION

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.

 

If Applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office

 

            HIRING TRADEMARK COUNSEL (advisory)

Because of the legal technicalities and strict deadlines of the trademark application process, Applicant is encouraged to hire a private attorney who specializes in trademark matters to assist in this process.  The assigned trademark examining attorney can provide only limited assistance explaining the content of an Office action and the application process.  USPTO staff cannot provide legal advice or statements about an Applicant’s legal rights.  TMEP §§705.02, 709.06.  See Hiring a U.S.-licensed trademark attorney for more information. 

 

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

 

 

/Dawn Han/

Examining Attorney

Law Office 107

(571) 272-0399

dawn.han@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 April 07, 2021 for

U.S. Trademark Application Serial No. 90233741

 

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. 

 

 

/Dawn Han/

Examining Attorney

Law Office 107

(571) 272-0399

dawn.han@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 April 07, 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.”