UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.

 

ISSUE/MAILING DATE: 3/17/2014

 

 

 

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issues 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 TO REGISTER -- DISPARAGING MARK
• REFUSAL TO REGISTER -- FALSE CONNECTION
• REFUSAL TO REGISTER -- LIKELIHOOD OF CONFUSION
• ADDITIONAL INFORMATION REQUIRED
• AMENDED IDENTIFICATION OF GOODS AND SERVICES REQUIRED
• INSUFFICIENT FEES PAID

 

REFUSAL TO REGISTER – DISPARAGING MARK

Registration is refused because the applied-for mark includes matter which may disparage or bring into contempt or disrepute persons, institutions, beliefs, or national symbols.  Trademark Act Section 2(a), 15 U.S.C. §1052(a); see In re Tam, 108 USPQ2d 1305, 1309 (TTAB 2013); In re Lebanese Arak Corp., 94 USPQ2d 1215, 1217 (TTAB 2010); TMEP §§1203.03, 1203.03(b).

 

The following two factors are considered when determining whether matter may be disparaging under Trademark Act Section 2(a):

 

(1) What is the likely meaning of the matter in question, taking into account not only dictionary definitions, but also the relationship of the matter to the other elements in the mark, the nature of the goods and/or services, and the manner in which the mark is used in the marketplace in connection with the goods and/or services

 

(2) If that meaning is found to refer to identifiable persons, institutions, beliefs, or national symbols, whether that meaning may be disparaging to a substantial composite of the referenced group

 

In re Tam, 108 USPQ2d at 1309; In re Lebanese Arak Corp., 94 USPQ2d at 1217; In re Heeb Media LLC, 89 USPQ2d 1071, 1074 (TTAB 2008); TMEP §1203.03(b)(i).

 

Applicant has applied to register the mark WASHINGTON REDSKIN POTATOES for printed matter, clothing, and entertainment services in the nature of presentations of football contests.  Applicant’s goods and services do not include “redskin potatoes.”  Although the use of “redskin” with potatoes may often have a different connotation, in the context of applicant’s mark that includes “WASHINGTON” and is used in connection with football-related goods and services, the connotation is disparaging.

 

The term “REDSKIN” in the mark is defined as follows: 

 

“Offensive Slang Used as a disparaging term for a Native American” (see attached evidence from http://education.yahoo.com/reference/dictionary/entry/redskin  captured 2/9/14);

 

“Usually Offensive AMERICAN INDIAN (see attached evidence from http://www.merriam-webster.com/dictionary/redskin captured 2/9/14);

 

“(slang) offensive term for Native Americans” (see attached evidence from http://www.vocabulary.com/dictionary/Redskin captured 2/9/14);

 

“dated offensive an American Indian” (see attached evidence from http://www.oxforddictionaries.com/us/definition/american_english/redskin?q=redskin captured 2/9/14);

 

“Slang (often disparaging and offensive)  a North American Indian” (see attached evidence from http://dictionary.infoplease.com/redskin captured 2/9/14).

 

As evidence that American Indians find the term “REDSKIN” offensive, see the attached news article, “NCAI Report: Redskins Name Has ‘Ugly and Racist Legacy’” (Indian Country Today online, October 11, 2013) located at http://indiancountrytodaymedianetwork.com/2013/10/11/ncai-report-redskins-name-has-ugly-and-racist-legacy-151714 (captured 2/15/14).  In fact, the National Congress of American Indians (NCAI) now uses the designations “R*dskins” and “R Word” when referring to “REDSKINS” sports teams mascots (see, e.g., attachment from http://www.ncai.org/resources/ncai_publications/ending-the-legacy-of-racism-in-sports-the-era-of-harmful-indian-sports-mascots captured 2/15/14).

 

As additional evidence that American Indians find the term “REDSKIN” offensive, see the attached article, “Oneida Indians meet with United Nations over Redskins name” (USA Today, January 25, 2014) located at http://www.usatoday.com/story/sports/nfl/redskins/2014/01/24/oneida-indian-nation-united-nations-meeting-washington-redskins-name/4838685/ (captured 2/15/14), and the attached article, “Oneida Indian Nation on D.C. Team Name: NFL Must Finally Stop Marketing Hate and Bigotry” located at http://www.oneidaindiannation.com/pressroom/Oneida-Indian-Nation-on-DC-Team-Name-NFL-Must-Finally-Stop-Marketing-Hate-and-Bigotry-229542581.html (captured 2/15/14).  See also the attached article, “Native American Activists Want Supreme Court to Hear Redskins Case” (Washington Post, September 16, 2009) located at http://www.washingtonpost.com/wp-dyn/content/article/2009/09/15/AR2009091500973.html (captured 2/15/14), which states that “Native American activists are trying to get the Supreme Court involved in its long-running dispute with the Washington Redskins about whether the team’s name is so offensive that it does not deserve trademark protection.”  This evidence reflects that, at this time, a substantial composite of Native American Indians find the current use of “REDSKINS” in conjunction with football disparaging.  Thus, applicant's use in this context also would be considered disparaging.

 

Given that “REDSKIN” in the mark is a derogatory slang term that refers to, and is considered offensive by, American Indians, registration of the applied-for mark must be refused under Section 2(a) of the Trademark Act.

 

Applicant should note the following additional ground for refusal.

 

REFUSAL TO REGISTER - FALSE CONNECTION

Registration is refused because the applied-for mark consists of or includes matter which may falsely suggest a connection with the Washington Redskins professional football team.  Although the Washington Redskins football team is not connected with the goods and/or services provided by applicant under the applied-for mark, the Washington Redskins football team is so famous that consumers would presume a connection.  Trademark Act Section 2(a), 15 U.S.C. §1052(a); see TMEP §1203.03, (c).  See generally Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imps. Co., 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983); In re Cotter & Co., 228 USPQ 202 (TTAB 1985); Buffett v. Chi-Chi’s, Inc., 226 USPQ 428 (TTAB 1985).

 

The following is required for a showing of false connection under Trademark Act Section 2(a):

 

(1) The mark sought to be registered is the same as, or a close approximation of, the name or identity previously used by another person or institution.

 

(2) The mark would be recognized as such, in that it points uniquely and unmistakably to that person or institution.

 

(3) The person or institution identified in the mark is not connected with the goods sold or services performed by applicant under the mark.

 

(4) The fame or reputation of the named person or institution is of such a nature that a connection with such person or institution would be presumed when applicant’s mark is used on its goods and/or services.

 

In re Jackson Int’l Trading Co., 103 USPQ2d 1417, 1419 (TTAB 2012); In re MC MC S.r.l., 88 USPQ2d 1378, 1379 (TTAB 2008); TMEP §1203.03(c)(i); see also Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imps. Co., 703 F.2d 1372, 1375-77, 217 USPQ 505, 508-10 (Fed. Cir. 1983) (providing foundational principles for the current four-part test used to determine the existence of a false connection).

 

Applicant has applied to register the mark WASHINGTON REDSKIN POTATOES for “entertainment services-namely, presentations of professional football contests,” “trading cards, posters, magazines and books regarding football, postcards, calendars, wrapping paper, paper gift boxes, paper stickers, paper napkins, paper towels, posterbooks, notepads, paper hats and greeting cards,” and “men's, women's and children's clothing and footwear; namely, coaches caps, wool hats, painters caps, baseball caps, visors, headbands, ear muffs, knit face masks, belts, wristbands, T-shirts, tank tops, pajamas, golf shirts, sweaters, sweatshirts, jackets, neckties, braces, bibs, jerseys, night shirts, coats, robes, raincoats, parkas, ponchos, sneakers, gloves, scarves, snow suits, mittens, aprons, down jackets, leather jackets, shorts, sweatpants, jeans, pants, knickers, socks, underwear, bathing suits and leg warmers.”

 

The combined wording “WASHINGTON REDSKIN” in the mark is a close approximation of the name or identity of the “Washington Redskins” professional football team and points uniquely and unmistakably to the team (see attached evidence from http://www.nfl.com/teams/washingtonredskins/profile?team=WAS) captured 2/15/14). 

 

There is no evidence in the record of any connection between the Washington Redskins football team and the goods and/or services to be sold by applicant under the WASHINGTON REDSKIN POTATOES mark.

 

The Washington Redskins football team sells or provides printed matter, clothing, and football-related entertainment services (see attached evidence from http://store.redskins.com/redskins-merchandise.php and http://www.redskins.com/tickets/index.html captured 2/15/14).  Where an applicant’s goods and/or services are of a type that the named person or institution sells or uses, and the named party is sufficiently famous, then it may be inferred that purchasers of the goods and/or services would be misled into making a false connection of sponsorship, approval, support or the like with the named party.  In re Cotter & Co., 228 USPQ 202, 204-05 (TTAB 1985); In re Nat’l Intelligence Acad., 190 USPQ 570, 572 (TTAB 1976).

 

Given the fame of the Washington Redskins football team and the fact that they provide printed matter, clothing, and football-related entertainment services, including goods and services identical or similar to those of applicant, the use of the mark WASHINGTON REDSKIN POTATOES on applicant's goods and services would cause consumers to presume a connection with the Washington Redskins football team.  Accordingly, registration is refused under Section 2(a) of the Trademark Act.

 

Applicant should note the following additional ground for refusal.

 

REFUSAL TO REGISTER – LIKELIHOOD OF CONFUSION

THIS PARTIAL REFUSAL APPLIES ONLY TO THE SERVICES SPECIFIED THEREIN

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 0978824 and 0986668.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the enclosed registrations.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a potential consumer would be confused, mistaken, or deceived as to the source of the goods and/or services of the applicant and registrant.  See 15 U.S.C. §1052(d).  A determination of likelihood of confusion under Section 2(d) is made on a case-by case basis and the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) aid in this determination.  Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1349, 98 USPQ2d 1253, 1256 (Fed. Cir. 2011) (citing On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1085, 56 USPQ2d 1471, 1474 (Fed. Cir. 2000)).  Not all the du Pont factors, however, are necessarily relevant or of equal weight, and any one of the factors may control in a given case, depending upon the evidence of record.  Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d at 1355, 98 USPQ2d at 1260; In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont de Nemours & Co., 476 F.2d at 1361-62, 177 USPQ at 567.

 

In this case, the following factors are the most relevant:  similarity of the marks, similarity and nature of the goods and/or services, and similarity of the trade channels of the goods and/or services.  See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.

 

• Applicant has applied to register the mark WASHINGTON REDSKIN POTATOES for “entertainment services-namely, presentations of professional football contests” (and goods not at issue).

 

• The registrant’s marks are WASHINGTON REDSKINS in typed form and WASHINGTON REDSKINS (and design), both for “entertainment services-namely, presentations of professional football contests.”

 

Similarity of the Marks

When comparing marks, the test is not whether the marks can be distinguished in a side-by-side comparison, but rather whether the marks are sufficiently similar in their entireties that confusion as to the source of the goods and/or services offered under applicant’s and registrant’s marks is likely to result.  Midwestern Pet Foods, Inc. v. Societe des Produits Nestle S.A., 685 F.3d 1046, 1053, 103 USPQ2d 1435, 1440 (Fed. Cir. 2012); Edom Labs., Inc. v. Lichter, 102 USPQ2d 1546, 1551 (TTAB 2012); TMEP §1207.01(b).  The focus is on the recollection of the average purchaser, who normally retains a general rather than specific impression of trademarks.  L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1438 (TTAB 2012); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975); TMEP §1207.01(b).

 

Applicant’s WASHINGTON REDSKIN POTATOES mark and the registrant’s WASHINGTON REDSKINS marks share the common matter “WASHINGTON REDSKIN” appearing at the beginning of applicant’s mark.   Consumers are generally more inclined to focus on the first part of any trademark or service mark.  See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F. 3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005); Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered” when making purchasing decisions).

 

The word “POTATOES” in applicant’s mark does not prevent a likelihood of confusion because the marks share the common matter “WASHINGTON REDSKIN” for identical services.    The mere addition of a term to a registered mark generally does not obviate the similarity between the marks nor does it overcome a likelihood of confusion under Trademark Act Section 2(d).  See, e.g., In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266 (TTAB 2009); In re El Torito Rests., Inc., 9 USPQ2d 2002 (TTAB 1988).  The only exceptions are when the matter common to the marks is merely descriptive or diluted, and not likely to be perceived by purchasers as distinguishing source, or when the marks in their entireties convey a significantly different commercial impression.  TMEP §1207.01(b)(iii); see, e.g., Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 73 USPQ2d 1350 (Fed. Cir. 2004); Citigroup Inc. v. Capital City Bank Grp., Inc., 94 USPQ2d 1645 (TTAB 2010); In re Shawnee Milling Co., 225 USPQ 747 (TTAB 1985); In re S.D. Fabrics, Inc., 223 USPQ 54 (TTAB 1984).  The matter common to the marks in this case -- “WASHINGTON REDSKIN” -- is neither descriptive nor diluted.

 

Moreover, the services are identical.  Where the goods and/or services of an applicant and registrant are identical or virtually identical, the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as in the case of diverse goods and/or services.  See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (citing Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 877, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992)); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); TMEP §1207.01(b).

 

Relatedness of the Services

When analyzing an applicant’s and registrant’s goods and/or services for similarity and relatedness, that determination is based on the description of the goods and/or services stated in the application and registration at issue, not on extrinsic evidence of actual use.  See Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); see also Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 1267, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002). 

 

Absent restrictions in an application and/or registration, the identified goods and/or services are presumed to travel in the same channels of trade to the same class of purchasers.  Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1356, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d at 1268, 62 USPQ2d at 1005.  Additionally, unrestricted and broad identifications are presumed to encompass all goods and/or services of the type described.  See In re Jump Designs, 80 USPQ2d 1370, 1374 (TTAB 2006); In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992). 

 

In this case, the identifications set forth in the application and registrations are identical and have no restrictions as to nature, type, channels of trade, or classes of purchasers.  Therefore, it is presumed that these services travel in all normal channels of trade, and are available to the same class of purchasers.  See Midwestern Pet Foods, Inc. v. Societe des Produits Nestle S.A., 685 F.3d 1046, 1053, 103 USPQ2d 1435, 1440 (Fed. Cir. 2012).  Accordingly, the services of applicant and the registrant are considered related for purposes of the likelihood of confusion analysis.

 

Given the similarity of the marks for identical services, there is a likelihood of confusion regarding the source of the services.  Accordingly, registration is refused under Section 2(d) of the Trademark Act.

 

PRIOR-PENDING APPLICATIONS (ADVISORY)

The filing dates of pending U.S. Application Serial Nos. 74300713 and 76228476 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.

 

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

 

Applicant must respond to the requirements set forth below.

 

ADDITIONAL INFORMATION REQUIRED

Due to the notoriety of the institution or person named in the mark, and the fact that there is no information in the application record regarding a connection with applicant, applicant must specify whether the Washington Redskins football team has any connection with applicant’s goods and/or services, and if so, must describe the nature and extent of that connection.  See 37 C.F.R. §2.61(b); TMEP §1203.03(c)(i). 

 

AMENDED IDENTIFICATION OF GOODS AND SERVICES REQUIRED

THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE GOODS AND SERVICES SPECIFIED THEREIN

 

The identification of goods and services is indefinite and must be clarified because it is overly broad and includes goods and services in more than one international class.  See TMEP §1402.01.  Applicant must amend the identification to specify the type of “paper hats” (paper hats for use as clothing items are in International Class 25, paper party hats are in International Class 28) and “bibs” (paper baby bibs are in International Class 16, cloth baby bibs and bib overalls are in International Class 25). 

 

In addition, applicant must re-classify the “Men’s, women’s and children’s clothing and footwear, namely, coaches caps, wool hats, painters caps, baseball caps, visors, headbands, ear muffs, knit face masks, belts, wristbands, T-shirts, tank tops, pajamas, golf shirts, sweaters, sweatshirts, jackets, neckties, braces, bibs, jerseys, night shirts, coats, robes, raincoats, parkas, ponchos, sneakers, gloves, scarves, snow suits, mittens, aprons, down jackets, leather jackets, shorts, sweatpants, jeans, pants, knickers, socks, underwear, bathing suits and leg warmers” in International Class 25 and the “entertainment services-namely, presentations of professional football contests” in International Class 41.

 

Applicant may adopt the following identification, if accurate: 

 

INTERNATIONAL CLASS 16:  Trading cards, posters, magazines and books regarding football; postcards, calendars, wrapping paper, paper gift boxes, paper stickers, paper napkins, paper towels, posterbooks, notepads and greeting cards; paper baby bibs

 

INTERNATIONAL CLASS 25:  Men’s, women’s and children’s clothing and footwear, namely, coaches’ caps, wool hats, painters’ caps, baseball caps, visors, headbands, ear muffs, knit face masks, belts, wristbands, T-shirts, tank tops, pajamas, golf shirts, sweaters, sweatshirts, jackets, neckties, braces, bibs, jerseys, night shirts, coats, robes, raincoats, parkas, ponchos, sneakers, gloves, scarves, snow suits, mittens, aprons, down jackets, leather jackets, shorts, sweatpants, jeans, pants, knickers, socks, underwear, bathing suits and leg warmers; paper hats for use as clothing items; cloth baby bibs; bib overalls

 

INTERNATIONAL CLASS 28:  Paper party hats

 

INTERNATIONAL CLASS 41:  Entertainment services, namely, presentations of professional football contests

 

An applicant may amend an identification of goods and services only to clarify or limit the goods and services; adding to or broadening the scope of the goods and/or services is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07 et seq.

 

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 at http://tess2.uspto.gov/netahtml/tidm.html.  See TMEP §1402.04.

 

INSUFFICIENT FEES PAID

The application identifies goods and services that are classified in at least three classes; however, applicant submitted a fee sufficient for only one class.  In a multiple-class application, a fee for each class is required.  37 C.F.R. §2.86(a)(2); TMEP §§810.01, 1403.01.

 

Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class.

 

The filing fees for adding classes to an application are as follows:

 

(1)  A $325 fee per class, when the fees are submitted with an electronic response filed online at http://www.uspto.gov/trademarks/teas/response_forms.jsp, via the Trademark Electronic Application System (TEAS).

 

(2)  A $375 fee per class, when the fees are submitted with a paper response.

 

37 C.F.R. §2.6(a)(1)(i)-(ii); TMEP §§810, 1403.02(c).

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS (ADVISORY)

For an application with more than one international class, called a “multiple-class application,” an applicant must meet all the requirements below for those international classes based on an intent to use the mark in commerce under Trademark Act Section 1(b):

 

(1)       LIST GOODS AND/OR SERVICES BY INTERNATIONAL CLASS:  Applicant must list the goods and/or services by international class.

 

(2)       PROVIDE FEES FOR ALL INTERNATIONAL CLASSES:  Applicant must submit an application filing fee for each international class of goods and/or services not covered by the fee(s) already paid (confirm current fee information at http://www.uspto.gov/trademarks/tm_fee_info.jsp).

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

RESPONSE GUIDELINES

For this application to proceed any further, applicant must explicitly address each refusal and/or requirement raised in this Office action.  If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register.  Applicant may also have other options for responding to a refusal and should consider such options carefully.  To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements.

 

If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end, the trademark will fail to register, and the application fee will not be refunded.  See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a), 2.209(a); TMEP §§405.04, 718.01, 718.02.  Where the application has been abandoned for failure to respond to an Office action, applicant’s only option would be to file a timely petition to revive the application, which, if granted, would allow the application to return to active status.  See 37 C.F.R. §2.66; TMEP §1714.  There is a $100 fee for such petitions.  See 37 C.F.R. §§2.6, 2.66(b)(1).

 

ATTORNEY

Because of the legal technicalities and strict deadlines involved in the USPTO application process, applicant may wish to hire a private attorney specializing in trademark matters to represent applicant in this process and provide legal advice.  Although the undersigned trademark examining attorney is permitted to help an applicant understand the contents of an Office action as well as the application process in general, no USPTO attorney or staff is permitted to give an applicant legal advice or statements about an applicant’s legal rights.  TMEP §§705.02, 709.06. 

 

For attorney referral information, applicant may consult the American Bar Association’s Consumers’ Guide to Legal Help at http://www.abanet.org/legalservices/findlegalhelp/home.cfm, an attorney referral service of a state or local bar association, or a local telephone directory.  The USPTO may not assist an applicant in the selection of a private attorney.  37 C.F.R. §2.11.

 

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. §2.191; TMEP §§304.01-.02, 709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusals and/or requirements in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

/Kathy de Jonge/

Examining Attorney

Law Office 107

(571) 272-9152

kathleen.dejonge@USPTO.gov (informal use only)

 

TO RESPOND TO THIS LETTER:  Go to http://www.uspto.gov/trademarks/teas/response_forms.jsp.  Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application.  For technical assistance with online forms, e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned trademark examining attorney.  E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

 

All informal e-mail communications relevant to this application will be placed in the official application record.

 

WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants).  If an applicant is represented by an attorney, the attorney must sign the response. 

 

PERIODICALLY CHECK THE STATUS OF THE APPLICATION:  To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.uspto.gov/.  Please keep a copy of the TSDR status screen.  If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199.  For more information on checking status, see http://www.uspto.gov/trademarks/process/status/.

 

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.uspto.gov/trademarks/teas/correspondence.jsp.