UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
| U.S. APPLICATION SERIAL NO. 87297154 MARK: AQUAPRASE | |
| CORRESPONDENT ADDRESS: | CLICK HERE TO RESPOND TO THIS LETTER: http://www.uspto.gov/trademarks/teas/response_forms.jsp |
| APPLICANT: Chordia, Avant | |
| CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: | |
OFFICE ACTION
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: 11/3/2017
THIS IS A FINAL ACTION.
This Office action is in response to applicant’s communication filed on October 12, 2017.
In a previous Office action dated April 12, 2017, the trademark examining attorney refused registration of the applied-for mark based on the following: Trademark Section 2(e)(1) because the mark is merely descriptive of the identified goods. The examining attorney also noted that the applied-for mark may be generic for “gems” as identified in the application. Finally, the examining attorney required applicant to provide information about the identified goods and delete duplicated wording from the mark.
Based on applicant’s response, the requirements to delete duplicated wording and to provide information about the identified goods has been satisfied. See TMEP §§713.02, 714.04.
Further, the trademark examining attorney maintains and now makes FINAL the refusal in the summary of issues below. See 37 C.F.R. §2.63(b); TMEP §714.04. All arguments and evidence from the April 12, 2017 Office Action are incorporated herein by reference.
SUMMARY OF ISSUES MADE FINAL that applicant must address:
SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE
Applicant’s mark is AQUAPRASE in standard characters for, as amended, “Gems; Jewelry”.
As argued in the initial Office Action, the determination of whether a mark is merely descriptive is made in relation to an applicant’s goods, not in the abstract. DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012); In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); TMEP §1209.01(b); see, e.g., In re Polo Int’l Inc., 51 USPQ2d 1061, 1062-63 (TTAB 1999) (finding DOC in DOC-CONTROL would refer to the “documents” managed by applicant’s software rather than the term “doctor” shown in a dictionary definition); In re Digital Research Inc., 4 USPQ2d 1242, 1243-44 (TTAB 1987) (finding CONCURRENT PC-DOS and CONCURRENT DOS merely descriptive of “computer programs recorded on disk” where the relevant trade used the denomination “concurrent” as a descriptor of a particular type of operating system).
Marketplace and Industry Use Show Applied-for Mark Merely Describes a Type of Gemstone
Contrary to applicant’s arguments in its response, the evidence of record indicates that the term “aquaprase” is used in the relevant industry and marketplace to merely describe the identified gems and jewelry in that the term identifies a type of blueish green, or aqua, chalcedony gemstone. (See Attachments to April 12, 2017 and November 2, 2017 Actions).
Applicant appears to argue that the term aquaprase is not being used in the jewelry and gemstone industry, such that the term would be considered merely descriptive of a type of chalcedony. This argument is not persuasive. The examining attorney previously attached website excerpts from GIA, crystalsandgemstones.com, and Jeweler Blog, which indicate the term “aquaprase” is a new type of chalcedony gemstone. (See Office Action dated April 12, 2017). Although the articles note that the gem was discovered and named by one of the applicants, the articles also use “aquaprase” in descriptive, if not generic, manners. For example, the article on crystalandgemstones.com notes that applicant was setting up a mine “to excavate the aquaprase”, references “two types of aquaprase” and “aquaprase specimens”, and displays “aquaprase” in lower case, without applying any source-indicating significance to the term. This article also indicates that the term is merely descriptive in its explanation of the name’s origin. The author reports that applicant realized he had discovered a new type of stone, because the “strong blue green” color could not be chrysoprase, a type of chalcedony, because chrysoprase means yellow-green. The article goes on to state that applicant chose the name “aquaprase” because aqua indicated blue, and prase indicated green. (See Attachments to April 2017 Office Action). Thus, it appears the combination was meant to describe the blue green color of the underlying stone. Indeed, the use of a similar word structure as chrysoprase chalcedony, and subsequent use by third parties in a descriptive manner, as outlined below, show that the applied-for mark merely describes a specific type of chalcedony gem and jewelry incorporating the same.
The examining attorney has attached additional articles to this Final, indicating that aquaprase is primarily considered a type of chalcedony, even while acknowledging an attempt to claim a trade name. For example, the Mindat.org excerpt provides definitions of a number of minerals and gemstones, including “aquaprase”. The top of the page provides the chemical formula for the stone, followed by a few definitions. The first definition is “a variety of chalcedony”. (See Attached Mindat.org). The second definition mentions that the stone is marketed under the trade name aquaprase; however, this page shows that the term is primarily understood as a type of chalcedony and not as an indicator of source of the relevant chalcedony.
Applicant argues that the term “aquaprase” is not in use in the industry. This argument is not persuasive. As indicated by the attached articles and retail websites, competitors and the jewelry/gemstone industry use the term “aquaprase” descriptively. Indeed, the examining attorney has attached over twenty jewelry and/or gemstone retailers that use “aquaprase” to describe the relevant gemstones and/or jewelry containing aquaprase gemstones. Further, a number of these third parties specifically label “aquaprase” as a type of gemstone. For example, Life Is A Gift Shop lists “aquaprase” in its list of gemstones that consumers may choose from to look for jewelry with that stone. Undershub lists “Aquaprase” as the “Main Stone” in the relevant jewelry, and explicitly lists “XtremeGems” as the brand. (See Attached). Thus, applicant’s argument and evidence that aquaprase is not in use by the industry is not persuasive.
Applicant contends that “chalcedony”, not aquaprase, is the relevant term to identify the type of gemstone. However, this argument appears to suggest that if chalcedony is one name for a gemstone then aquaprase cannot also be a name for the type of gemstone. The fact that other terms are available to describe or identify a particular good does not affect whether the applied-for-mark is also merely descriptive of the identified goods. Multiple terms may be descriptive of and/or generic for a single item (e.g., shoes and footwear). In the context of the identified goods, the attached evidence from Minerals.net shows that there are a number of different types of chalcedony, each with its own common name. (See Attached). Thus, chalcedony often has multiple terms that are descriptive of, or generic for, the gemstones. As noted above, one of the types of chalcedony is “chrysoprase” – an “apple green” chalcedony. (See Attached). Thus, aquaprase is merely a subcategory of chalcedony that indicates a an aqua colored green chalcedony.
Similarly, the evidence applicant submits of technical gemstone reports indicating that aquaprase is a type of chalcedony are not sufficient to show that aquaprase also is not merely descriptive of a type of gemstone. As with chrysoprase, “aquaprase” is likely to be perceived by consumers of gemstones and jewelry containing gemstones as another common name for chalcedony that merely indicates the blueish green color range of the underlying stone.
In the present case, contrary to applicant’s assertion in its response, competitors and the jewelry industry in general will need to use this term to describe a type of chalcedony gemstone and jewelry using such gems. The attached third party websites show numerous descriptive uses of “aquaprase” by third parties to describe the gemstone being used in a particular piece of jewelry or being sold as a loose stone. (See Attached). For example, Lola Brooks, Matahina, The Premier Estate Sale Marketplace, Nellie Bly 2, Armenta, Semiprecious Wholesale, Etsy, Moda Operandi, Georgia Alexandra, Puppy Love Jewelry, Touchstone Gallery, and other third party jewelry designers and retailers, as shown in the attached evidence, use the term “aquaprase” in a descriptive, if not generic, manner to identify gemstones, whether sold loose or as part of jewelry. (See Attached).
In particular, on the August website, the Lola Brooks ring is described as follows: “Lola Brooks 18k yellow gold, marquis shaped aquaprase ring.... The 16.36ct aquaprase measures approximately 1 1/4" x 1/2" & is set in Lola's signature bezel setting”. The listing uses “aquaprase” in lower case and in a manner used to inform potential purchasers of the type of gemstone.
The Matahina necklace on "ITVSN.com", is described as featuring the following: "Aquaprase pebble, Cabochon button bead and Zircon facetted button bead...." This listing uses aquaprase in the same manner as the other descriptive and/or common terms of the gemstones in the necklace. Specifically, cabochon is a type of “highly polished, convex-cut, unfaceted gem” and “zircon” is “a brown to colorless mineral, ZrSiO4, which is heated, cut, and polished to form a brilliant blue-white gem” (See Attached American Heritage Dictionary Evidence).
Puppy Love Jewelry on Amazon.com describes the stone in its “Aquaprase Blue Green Chalcedony...Pendant” as an “unwrapped gemmy rough light blue aquaprase stone”. The description goes on that “this recently discovered stone qualifies as a new, not seen before gemstone (per GIA) - a new natural color of chalcedony”. Again, this use does not indicate any brand significance to the term “aquaprase”.
Touchstone Gallery offers an “Aquaprase pendant” and describes the aquaprase stone as "a bluish green chalcedony, colored by chromium and nickel. Translucent and opaque colors are features of this beautiful gemstone from Africa”.
The Premier Estate Sale offers a ring it describes as “a sterling silver aquaprase ring.... The aquaprase ring features a light blue stone with twisted wire surround and etched shank.”
Georgia Alexandra’s listing for “Aquaprase Diamond Earrings” describes the earrings and then lists the carat weights of the stones separately with “Cabochon aquaprase” followed immediately by “Emerald cut diamonds”, both gemstones appearing in the same stylization, indicating that both are being used as common, descriptive terms for the gemstones in the earrings.
Artistic Colored Stones sells a number of cuts of “aquaprase” loose, and also uses the wording in the same size and font as other common names for stones it sells.
In sum, numerous competitors in the jewelry and gemstone marketplace use this term as a common and merely descriptive term for a type of chalcedony gemstone. As such, consumers will immediately perceive the wording “aquaprase” as indicating the type of gemstone identified in the application and/or as using said gemstone in the identified jewelry.
Applicant’s Coined Term Argument
Applicant has argued that the applicant coined the term “aquaprase” and that applicant is using “aquaprase” as a trade and brand name as a basis for overcoming the descriptiveness refusal. Applicant’s argument is not persuasive. The fact that an applicant may be the first user of a merely descriptive designation does not necessarily render a word or term incongruous or distinctive; as in this case, the evidence shows that “aquaprase” is merely descriptive. See In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1514 (TTAB 2016); In re Phoseon Tech., Inc., 103 USPQ2d 1822, 1826 (TTAB 2012); TMEP §1209.03(c).
The evidence of record shows that the gemstone and jewelry industry, and thus consumers therof, will understand and use this term to describe a type of gemstone. As such, consumers will not perceive “aquaprase” as identifying source uniquely in the applicant. Rather, consumers will perceive “aquaprase” used in connection with gems and jewelry as merely describing the type of gem. As stated above, the descriptiveness of the term does not hinge on whether applicant was first, but whether the term immediately and merely describes a quality or feature of the goods. The evidence of record supports the latter.
Thus, even if the applied-for-mark was once arbitrary or suggestive, such a term may lose its distinguishing and origin-denoting characteristics through use in a descriptive sense over a period of time, and may come to be regarded by the purchasing public as nothing more than a descriptive designation. In re Digital Research, Inc., 4 USPQ2d 1242, 1243 (TTAB 1987); In re Int’l Spike, Inc., 190 USPQ 505, 507 (TTAB 1976).
Thus, trademark rights are not static, and eligibility for registration must be determined on the basis of the facts and evidence in the record at the time registration is sought, which includes during examination and any related appeal. In re Chippendales USA Inc., 622 F.3d 1346, 1354, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010); In re Morton-Norwich Prods., Inc., 671 F.2d 1332, 1344, 213 USPQ 9, 18 (C.C.P.A. 1982); In re Thunderbird Prods. Corp., 406 F.2d 1389, 1391, 160 USPQ 730, 732 (C.C.P.A. 1969).
Applicant further argues that the absence of aquaprase in various dictionaries and gemstone glossaries indicates it is not a type of gemstone and that it is not merely descriptive of the identified goods. The fact that a word or term is not found in the dictionary is not controlling on the question of registrability when the word or term, as here, has a well understood and recognized meaning. In re Orleans Wines, Ltd., 196 USPQ 516, 517 (TTAB 1977); TMEP §1209.03(b); see In re Gould Paper Corp., 834 F.2d 1017, 1018, 5 USPQ2d 1110, 1111-12 (Fed. Cir. 1987); In re Planalytics, Inc., 70 USPQ2d 1453, 1456 (TTAB 2004); In re Tower Tech Inc., 64 USPQ2d 1314 (TTAB 2002). The aforementioned evidence makes clear that third party competitors understand aquaprase to have a specific meaning in the industry as a type of chalcedony stone.
Combined Terms Merely Descriptive of the Identified Goods
The examining attorney also argued in the initial Office Action that the wording “aquaprase” was merely descriptive, apart from its use as a common term for the underlying gemstones. The word “aquaprase” is merely the combination of two descriptive terms, commonly used to describe and/or identify the gemstone chalcedony, and jewelry using such stones. As indicated in the initial office action, the term “aqua” is defined as a light blueish green or greenish blue color. (See Attachments to April 2017 Office Action). The examining attorney has attached additional definitions of “aqua” from Merriam-Webster and the American Heritage Dictionary to this final action, again indicating that “aqua” is defined as a greenish blue color. (See Attached). As discussed above, aquaprase is noted for its blue green color. As such, the wording “aqua” is merely descriptive of the coloring of gems and jewelry containing aquaprase and exhibiting blue green coloring.
As the examining attorney indicates above, and as the applicant appears to argue, the descriptiveness of a mark must be considered in the context of the identified goods. As such, the examining attorney also has attached third party websites, including Overstock.com, Etsy, and Vita Beads, offering chalcedony jewelry and/or beads described as “aqua chalcedony”. (See Attached). These chalcedony jewelry pieces, as shown in the attachments, feature stones that are blue green in color. This evidence shows that, in the context of gems and jewelry, and chalcedony in particular, the term “aqua” would be understood immediately by the average purchaser to merely describe the color range of the identified gems and jewelry.
The examining attorney previously attached evidence defining “prase” as a type of green chalcedony. (See Attachments to April 2017 Office Action). The examining attorney has attached additional definitions to this action from the American Heritage Dictionary and Collins English Dictionary, again defining “prase” as a “light green” and “greenish variety of chalcedony”. (See Attached). Also attached are excerpts from third party websites indicating that “prase” is a type of chalcedony. For example, Gem Resources lists “prase” as a gem available with “chalcedony” to its right in parenthesis, indicating that prase is chalcedony. Similarly, the webpage from IGS - International Gem Society, titled “Chrysoprase Value, Price, and Jewelry Information” states “[s]ometimes, the term ‘prase’ is used to describe[sic] chrysoprase gems with darker tones. However, prase is also used to refer to green chalcedonies colored by chlorite inclusions found in Europe”. (See Attached). This evidence shows that the wording “prase” is merely descriptive of a feature of the identified gems and jewelry, namely, that the gems are a type of green chalcedony and that the jewelry features that stone.
As argued in the April Office Action, the combination of “aqua”, meaning blueish green / greenish blue, with “prase”, meaning a type of green chalcedony, does not change the commercial impression of the applied-for-mark to make it suggestive, or otherwise overcome this refusal. The combination merely indicates a specific type of green chalcedony, visually indicated by its “aqua” or blueish green coloring. Indeed, the IGS evidence referenced above discusses “chrysoprase” in the context of jewelry, indicating that consumers of chalcedony jewelry are accustomed to seeing “-prase” as a suffix to refer to chalcedony gems of a green color. (See Attached).
Applicant argues that the term “aquaprase” is suggestive, not descriptive, of the identified goods, because a consumer must use “multi-stage reasoning” to understand the meaning of the term in connection with the identified goods. Specifically, applicant sets forth that the terms “aqua” and “prase” have other meanings, including water and the phonetic equivalent of “praise” such that the mark alludes to “admiration or adoration of the sea”. (See Response October 12, 2017). This argument is not persuasive because it asks the examining attorney to substitute the common meaning of “aqua” and “prase” in the context of the goods with abstract and unrelated meanings. While “aqua” does have other meanings, “aqua” describes coloring in the context of jewelry and gemstones. (See Attached Evidence). Similarly, prase means a type of green chalcedony. As argued above, descriptiveness is considered in relation to the relevant goods. DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012). “That a term may have other meanings in different contexts is not controlling.” In re Franklin Cnty. Historical Soc’y, 104 USPQ2d 1085, 1087 (TTAB 2012) (citing In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979)); TMEP §1209.03(e).
Applicant also appears to argue that the applied-for mark calls to mind “antiquity, luxury, wealth, and the magnificence of the sea”. Apart from a reference to the color of the sea, it is unclear how the applied-for mark references any of these attributes. Indeed, applicant’s reference to the Greek origin of “prase” reinforces the color meaning of the term as “green” or “verdant”. The submitted evidence that the gemstone calls to mind the Aegean sea is not evidence that the applied-for mark calls to mind the sea, or that consumers encountering the mark would find the mark suggestive of the sea. Consumers are more likely to use the common meanings of the terms and thus immediately understand that compound is merely descriptive of the color and type of gemstone identified in the goods, rather than considering the mark as suggestive of a more attenuated link to the sea. Similarly, consumers familiar with the etymology of “prase” are likely to consider its modern definition, green chalcedony, first, and perhaps acknowledge its Greek origins meaning green, second, both of which would be merely descriptive interpretations of the identified goods; however, it seems unlikely that such consumers would contemplate that the term might be suggestive of antiquity based on its Greek origins. As such, the applied-for mark is merely descriptive, not suggestive, of the identified goods.
Applicant likewise argues that the meanings of the terms must be made in the context of the identified goods. Applicant appears to contend that its goods could identify gems and jewelry that do or do not include aquaprase stones, and that, as such, the mark is not merely descriptive of the identified goods. This argument is not persuasive. The broad wording “gems” and “jewelry” in the amended identification presumably encompasses all goods of the type described, including aquaprase gemstones and jewelry featuring aquaprase gemstones. See, e.g., Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015); In re N.A.D., Inc., 57 USPQ2d 1872, 1874 (TTAB 2000). As such, the mark is merely descriptive of the identified goods even though the goods could identify non-aquaprase gems and jewelry. A mark does not need to be merely descriptive of all the goods or services specified in an application. In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); In re Franklin Cnty. Historical Soc'y, 104 USPQ2d 1085, 1089 (TTAB 2012). “A descriptiveness refusal is proper ‘if the mark is descriptive of any of the [goods or] services for which registration is sought.’” In re The Chamber of Commerce of the U.S., 675 F.3d at 1300, 102 USPQ2d at 1219 (quoting In re Stereotaxis Inc., 429 F.3d 1039, 1040, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005)).
Applicant’s argues that the Trademark Trial and Appeal Board has found that a mark may not be merely descriptive where it describes some of the goods, but not all of the goods. Applicant bases this argument on in re Ashley O’Rourke, Serial No. 77093617 (December 2, 2009). This argument is not persuasive. At the outset, the examining attorney notes that this case is not precedential and thus not binding upon the Board, although it may be cited for whatever persuasive value it might have. TBMP §101.03; TMEP §705.05. Further, unlike the cited case, the evidence of record indicates that applicant is not merely selling some aquaprase. Rather, applicant alleges that he discovered the stone and has noted that third party articles indicate his intention of marketing the stone to others. This evidence suggests that applicant seeks to sell a significant amount of aquaprase gems and aquaprase jewelry. Indeed, every piece of jewelry in the specimen of record features aquaprase.
Applicant also appears to argue that because some of its “jewelry” do not fall under the category of “gemstones” that aquaprase cannot be merely descriptive of these goods. This argument is not persuasive. “A mark may be merely descriptive even if it does not describe the ‘full scope and extent’ of the applicant’s goods or services.” In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004) (citing In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1346, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001)); TMEP §1209.01(b). It is enough if a mark describes only one significant function, attribute, or property. In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); TMEP §1209.01(b); see In re Oppedahl & Larson LLP, 373 F.3d at 1173, 71 USPQ2d at 1371.
As indicated by applicant’s specimen of record, aqua colored green chalcedony, or aqua prase, is a significant attribute of the jewelry identified in the application. Thus, the applied-for mark merely describes the identified jewelry goods.
Aquaprase Prosecution History
Applicant indicates that applicant previously owned an application for the same mark in connection with the same or related jewelry goods in Class 14. The relevant application Ser. No. 86733424 was abandoned on November 21, 2016 for failure to file a timely Statement of Use. Applicant argues that because no substantive refusals were made in connection with the prior-filed application, that the examining attorney should not now refuse the applied-for mark under Trademark Act Section 2(e)(1). This argument is not persuasive.
Indeed, trademark examining attorneys are not bound by the actions of past examining attorneys in prior registrations, even if the registrations have some characteristics similar to the application at issue; each case is decided on its own merits. In re Manwin/RK Collateral Trust, 111 USPQ2d 1311, 1315 (TTAB 2014) (citing In re Nett Designs, Inc., 236 F.3d 1339, 1342, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001)).
Further, the previous application was approved for publication in February 2016, more than a year and a half ago. As discussed above, a term that was once arbitrary or suggestive may lose its distinguishing and origin-denoting characteristics through use in a descriptive sense over a period of time, and may come to be regarded by the purchasing public as nothing more than a descriptive designation. In re Digital Research, Inc., 4 USPQ2d 1242, 1243 (TTAB 1987); In re Int’l Spike, Inc., 190 USPQ 505, 507 (TTAB 1976).
To the extent applicant had trademark rights prior to now, those rights were not static, and the examining attorney must determine applicant’s eligibility for registration based on the facts and evidence in the record at the time registration is sought, which includes during examination and any related appeal. In re Chippendales USA Inc., 622 F.3d 1346, 1354, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010); In re Morton-Norwich Prods., Inc., 671 F.2d 1332, 1344, 213 USPQ 9, 18 (C.C.P.A. 1982); In re Thunderbird Prods. Corp., 406 F.2d 1389, 1391, 160 USPQ 730, 732 (C.C.P.A. 1969).
In sum, the applied-for mark is merely descriptive of the identified goods both because it is used by third party competitors and the industry to merely describe a type of gem stone and jewelry featuring those stones, and because the applied-for-mark is a compound term, using terms that, in the context of the identified goods, merely describe that applicant’s gems are and its jewelry features green chalcedony that is aqua in coloring.
Therefore, the refusal to register the applied-for mark under Trademark Act Section 2(e)(1) is maintained and made FINAL.
FINAL ACTION – RESPONSE GUIDELINES
(1) a response filed using the Trademark Electronic Application System (TEAS) that fully satisfies all outstanding requirements and/or resolves all outstanding refusals; and/or
(2) an appeal to the Trademark Trial and Appeal Board filed using the Electronic System for Trademark Trials and Appeals (ESTTA) with the required filing fee of $200 per class.
37 C.F.R. §2.63(b)(1)-(2); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.
In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues. TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters). There is a fee required for filing a petition. 37 C.F.R. §2.6(a)(15).
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.
If the applicant has any questions or requires assistance in responding to this FINAL Action, please telephone the assigned examining attorney.
/gaynne g zimmerman/
Gaynne G. Zimmerman
Examining Attorney
Law Office 120
Telephone: 571-272-4027
gaynne.zimmerman@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.