To: | TAS Rights Management, LLC (trademarkdocket@venable.com) |
Subject: | U.S. Trademark Application Serial No. 90523928 - TAYLOR'S VERSION - 124909537 |
Sent: | September 13, 2021 09:50:26 AM |
Sent As: | ecom110@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90523928
Mark: TAYLOR'S VERSION
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Correspondence Address: |
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Applicant: TAS Rights Management, LLC
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Reference/Docket No. 124909537
Correspondence Email Address: |
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COMBINED EXAMINER’S AMENDMENT/PRIORITY ACTION 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: September 13, 2021
USPTO database searched; no conflicting marks found. The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting marks that would bar registration under Trademark Act Section 2(d). 15 U.S.C. §1052(d); TMEP §704.02.
Applicant must address issues shown below. On September 10, 2021, the examining attorney and REBECCA LIEBOWITZ discussed the issues below. Applicant must timely respond to these issues. See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §708.05.
SOLE ISSUE:
U.S. APPLICANT WITH POST OFFICE BOX ADDRESS/MAILBOX SERVICE & U.S. LICENSED ATTORNEY OF RECORD - DOMICILE REQUIRED - §1
Applicant must clarify its domicile street address because the domicile address of record identifies a post office box and does not appear to be applicant’s permanent legal place of residence or principal place of business. See 37 C.F.R. §§2.11(b), 2.189; TMEP §601.01(b)(1). A domicile address must identify either (1) the permanent legal place of residence, which is the place an individual applicant resides and intends to be the applicant’s principal home; or (2) the principal place of business, which is the juristic applicant’s headquarters where its senior executives or officers ordinarily direct and control the entity’s activities. See37 C.F.R. §2.2(o)-(p); TMEP §803.05(a). All applications must include the applicant’s domicile address, which is required for a complete application. See 37 C.F.R. §§2.22(a)(1), 2.32(a)(2), 2.189.
In this case, the application record lists applicant as a juristic entity and specifies applicant’s domicile as a post office box or mailbox service. See attached evidence from The UPS Store showing the address of record is a third party mailbox service, with the last three numbers of the Suite number designating the individual box. In most cases, a post office box is not acceptable as a domicile address because it does not identify the location of applicant’s headquarters where the entity’s senior executives or officers ordinarily direct and control the entity’s activities. See37 C.F.R. §2.2(o)-(p); TMEP §601.01(b)(1).
Response options. Applicant must provide its domicile street address. See 37 C.F.R. §2.32(a)(2), 2.189; TMEP §803.05. Alternatively, applicant may provide documentation showing that the listed address is, in fact, applicant’s domicile. See37 C.F.R. §2.11(b); TMEP §601.01(b)-(b)(1).
To provide applicant’s domicile street address. After opening the correct Trademark Electronic Application System (TEAS) response form and entering the serial number, (1) answer “yes” to wizard question #5 and click “Continue;” (2) on the “Owner Information” page, in the “Domicile Address” field, uncheck the box stating the domicile and mailing address are not the same; and (3) below the checkbox provide applicant’s domicile street address. Applicant’s domicile street address will be hidden from public view if it is entered into the “Domicile Address” field. However, any street address listed in the “Mailing Address” field will be publicly viewable.
To provide documentation to support applicant’s domicile address. Applicant should provide the most recent documentation showing that the address is the applicant’s business headquarters, for example one of the following: (1) the most recent final annual or quarterly report or other similar report; or (2) a current certificate of good standing for the corporation or other business entity issued by a federal or state government agency. TMEP §601.01(b)-(b)(1); see 37 C.F.R. §2.11(b). Submitted documentation must show the name, listed domicile address, and the date of the document but should redact other personal and financial information.
To provide this documentation, open the correct TEAS response form and enter the serial number, answer “yes” to wizard question #3, and on the “Additional Statement(s)” page, below the “Miscellaneous Statement” field, click the button below the text box to attach documentation to support the street address.
Application has been amended as shown below. As agreed to by the individual identified in the Priority Action section, the examining attorney has amended the application as shown below. Please notify the examining attorney immediately of any objections. TMEP §707. In addition, applicant is advised that amendments to the goods and/or services are permitted only if they clarify or limit them; amendments that add to or broaden the scope of the goods and/or services are not permitted. 37 C.F.R. §2.71(a).
CLAIM OF OWNERSHIP OF PRIOR REGISTRATIONS - CONSENT OF LIVING INDIVIDUAL CONTAINED THEREIN
In addition to the acceptable application claim of ownership of prior registrations, applicant also claims ownership of active Registration Nos. 5529441, 5573329 if not already claimed. These prior registrations contain a consent of a living individual statement for the TAYLOR portion of the mark(s). TMEP §1206.04(c).
How to respond. Click to file a response to this nonfinal Office action.
/Tricia Sonneborn/
Examining Attorney – Law Office 110
United States Patent & Trademark Office
(571) 272-9225
tricia.sonneborn@uspto.gov
RESPONSE GUIDANCE