To: | Dinamo GmbH (trademarks@patentusa.com) |
Subject: | U.S. Trademark Application Serial No. 90647980 - ABC MARFA - T-11498 |
Sent: | January 05, 2022 08:27:26 AM |
Sent As: | ecom110@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90647980
Mark: ABC MARFA
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Correspondence Address:
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Applicant: Dinamo GmbH
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Reference/Docket No. T-11498
Correspondence Email Address: |
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FINAL 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) and/or Electronic System for Trademark Trials and Appeals (ESTTA). A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action.
Issue date: January 05, 2022
This Office action is in response to applicant’s communication filed on November 30, 2021.
In a previous Office action dated August 27, 2021, the trademark examining attorney advised applicant that a prior-filed application may bar registration of the applied-for mark, if the prior-filed application registers. In addition, applicant was required to satisfy the following requirements: (1) provide a definite, amended identification of goods and services, (2) satisfy multiple-class application requirements, and (3) submit a copy of the foreign registration.
Based on applicant’s response, the advisory concerning the prior-filed application is withdrawn, as applicant has claimed ownership of the prior-filed application. In addition, applicant has satisfied the following requirements: (1) applicant provided a definite, amended identification of goods and services and (2) satisfied multiple-class application requirements. See TMEP §§713.02, 714.04.
However, although applicant’s response includes a certified extract that contains information about the foreign application and registration, applicant did not submit an acceptable copy of the foreign registration.
Accordingly, the trademark examining attorney maintains and now makes FINAL the requirement in the summary of issues below. See 37 C.F.R. §2.63(b); TMEP §714.04.
SUMMARY OF ISSUES MADE FINAL that applicant must address:
FOREIGN REGISTRATION CERTIFICATE REQUIRED
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.
The examining attorney notes that applicant’s response to the August 27, 2021 Office action includes a certified copy of an extract from the European Union Intellectual Property Office that shows the procedural history of and information about the relevant foreign application and registration. This extract is not acceptable as a true copy, photocopy, certification, or certified copy of the foreign registration issued to applicant by, or certified by, the intellectual property office in applicant’s country of origin. See 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01.
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).
RESPONDING TO THIS FINAL OFFICE ACTION
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 request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).
/Todd J. Lewellen/
Todd J. Lewellen
Examining Attorney
Law Office 110
571-272-3199
todd.lewellen@uspto.gov
RESPONSE GUIDANCE