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.  A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.

 

 

ISSUE/MAILING DATE: 1/21/2019

 

 

 

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.

 

SEARCH OF OFFICE’S DATABASE OF MARKS

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).

 

SUMMARY OF ISSUES:

·        Refusal – Swatch Drawing – Application Seeks Registration of More Than One Mark

·        Identification of Goods and/or Services Requirements

 

REFUSAL – SWATCH DRAWING – APPLICATION SEEKS REGISTRATION OF MORE THAN ONE MARK

Registration is refused because applicant seeks registration of more than one mark in its application.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; see TMEP §§1202.19(g)–(g)(ii); 1214.01.  An application must be limited to only one mark.  37 C.F.R. §2.52; TMEP §§807.01, 1214.01; see 15 U.S.C. §1051(a)(1), (b)(1); In re Int’l Flavors & Fragrances Inc., 183 F.3d 1361, 1366, 51 USPQ2d 1513, 1516 (Fed. Cir. 1999); TMEP §§1202.19(g)–(g)(ii).

 

In the present case, the mark drawing consists of a “swatch” showing the applied-for repeating-pattern mark within a rectangle, rather than depicting the pattern’s particular placement on an item.  Generally, swatch-type drawings do not adequately depict the nature of repeating patterns, because the commercial impression of these patterns may change depending on the nature of the pattern, the type of item the pattern appears on, the particular placement of the pattern on that item, and the size and scale of the elements in the pattern as applied.  Thus, a swatch-type drawing may encompass more than one mark and each mark may create a different commercial impression.  See TMEP §1202.19(a)(iii).    

 

Accordingly, a swatch-type drawing is acceptable only when an applicant has submitted sufficient evidence to establish that the mark is applied to various items but that these various uses of the repeating pattern nonetheless create the same commercial impression.  In the absence of this evidentiary showing, swatch-type drawings of repeating patterns, such as the mark drawing here, are deemed to encompass more than one mark.  See TMEP §§1202.19(a)(iii), 1202.19(g)–(g)(ii); cf. In re Upper Deck Co., 59 USPQ2d 1688, 1689-91 (TTAB 2001) (holding unregistrable a mark comprising a hologram on a trading card when the hologram may have a myriad of shapes, sizes, contents and the like); In re Elvis Presley Enters., 50 USPQ2d 1632, 1633-34 (TTAB 1999) (holding unregistrable a mark comprising all likenesses and images of one particular person in all possible manners of presentation without limitation as to age, manner of dress, or pose).

 

Because applicant has submitted a swatch-type mark drawing that encompasses more than one mark, and has not provided evidence that the mark, as applied to the various identified goods and services, would create the same commercial impression, registration is refused.  See 15 U.S.C. §§1051, 1127; TMEP §§1202.19(g)–(g)(ii).

 

Applicant may respond by satisfying one of the following response options, as appropriate:

 

(1)  Amend the mark drawing to depict the repeating-pattern mark as it appears on a particular item encompassed by the identification of goods, and amend the mark description accordingly.  The drawing must show the precise placement of the pattern on the particular item, which may be on only a portion of the item or over the entire surface of the item.  The shape of the item must appear in broken lines to indicate that it is not claimed as part of the mark.  37 C.F.R. §2.52(b)(4); TMEP §807.08.  The mark description must indicate that the mark consists of a pattern, specify how the pattern will appear on the relevant item, and describe any portions of the mark that are shown in broken lines and thus are not claimed as a feature of the mark.  See TMEP §§807.08, 808.02.  If necessary, amend the identification to delete goods that are inconsistent with the item appearing in the amended mark drawing.  See TMEP §1202.19(f).  If the repeating pattern will be applied to multiple goods, a drawing showing the pattern’s placement on one of the goods is appropriate if all of the identified goods are similar in form and function, and the mark will appear in a similar manner on all of the goods.  Likewise, if the repeating-pattern mark will appear in a similar manner on various sizes of similarly shaped product packaging, then a drawing showing the mark appearing on one version of the packaging depicted in broken lines is acceptable.   

 

(2)  Submit evidence that (i) the applied-for mark is used, or will be used, in various ways or on a variety of items, but (ii) it will nonetheless be perceived as a source indicator and create the same commercial impression across all uses.  The evidence of variable use referred to in (i) above need not show every use of the repeated pattern on the relevant items, but it should establish that the use (or intended use) of the mark in connection with the identified goods or services is so varied that a single depiction of the mark on a particular item would not accurately reflect the nature of the mark.  This may include declarations, marketing materials, and other similar matter.  The evidence as to the commercial impression referred to in (ii) above must be substantial and must establish that the pattern will be perceived as a source indicator and create the same commercial impression in the minds of consumers.  Relevant evidence may include consumer declarations; advertisements or other materials showing various instances of the pattern being used together in one place (e.g., a single advertisement that shows the pattern being used in various ways on various goods, but nonetheless projecting the same commercial impression); sales figures relevant to the various items featuring the pattern; and any other evidence of the applicant’s efforts to promote the various uses of the repeating pattern as a single source indicator for the relevant goods or services, including “look-for”-type evidence.  See TMEP §1202.19(a)(iii).

 

Applicant should note the following additional requirements.

 

IDENTIFICATION OF GOODS AND SERVICES REQUIREMENTS

A number of items in the identification of goods and services are indefinite and must be amended to clarify the nature of the goods and services, and in some instances, provide additional details regarding the functions and/or subject matter of the goods and services. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

Please see the suggestions below, which contain additional guidance throughout. Suggestions for adding language are bold and underlined, while instances where additional details are required are within brackets, with specific instructions italicized.

 

Applicant may adopt any or all of the following suggestions, if accurate:

 

International Class 9: computer software, recorded for {specify function, e.g., database management}; downloadable computer software applications for {specify function, e.g., database management}; downloadable music files; data processing apparatus; interfaces for computers; video game software; computer game software; disk drives for computers; computer monitors; computer operating programs, recorded; downloadable computer programs for {specify function, e.g., database management}; computer programs, recorded for {specify function, e.g., database management}; downloadable electronic publications in the nature of {specify format, e.g., books, magazines} in the field of {specify subject matter, e.g., music}; computer software, recorded for {specify function, e.g., database management}

 

International Class 37: Repair services for {specify what is being repaired, e.g., vehicles}; Installation services for {specify what is being installed, e.g., elevators}; Installation, maintenance, and repair of computer hardware {please note that installation, maintenance and repair of computer software is a Class 42 service}; electric appliance installation and repair; installation, maintenance and repair of computer hardware; providing repair information in the field of {specify what is being repaired, e.g., vehicles}; office machines and equipment installation, maintenance and repair; interference suppression services for in electrical apparatus; telephone installation and repair

 

International Class 42: updating of computer software; website hosting services; computer rental; rental of web servers; rental of computer software; computer system analysis; consultancy in the design and development of computer software and hardware; computer programming services; consultancy in the design and development of computers; business technology software consulting services; monitoring of computer systems by remote access to ensure proper functioning; conversion of data or documents from physical to electronic media; conversion of computer programs and data, other than physical conversion; creating and maintaining web sites for others; computer software design; installation of computer software; technical research in the field of {specify, e.g., aeronautics}; duplication of computer programs; recovery of computer data; maintenance of computer software

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

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.  See TMEP §1402.04.

 

RESPONSE GUIDELINES

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 action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

To expedite prosecution of the application, applicant is encouraged to file its response to this Office action online via the Trademark Electronic Application System (TEAS), which is available at http://www.uspto.gov/trademarks/teas/index.jsp.  If applicant has technical questions about the TEAS response to Office action form, applicant can review the electronic filing tips available online at http://www.uspto.gov/trademarks/teas/e_filing_tips.jsp and e-mail technical questions to TEAS@uspto.gov.

 

 

 

 

 

TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE:  Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application.  See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820.  TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services.  37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04.  However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.  

 

 

 

/Nicole Nguyen/

Senior Attorney

Law Office 114

(571) 272-2815

nicole.nguyen@uspto.gov

 

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.