TEAS [Trademark Response Form] Wizard Help Instructions

[These are the instructions that the USPTO provides to TEAS and TEAS Plus users that are filing Response Forms such as Responses to Office Actions online. You can access these help instructions online by clicking on the links provided in the TEAS form. Those unfamiliar with TEAS may want to read and understand these sections and rules before starting their session. Note: The USPTO online help has obsolete links in it that have been corrected here but may become obsolete again. The USPTO frequently changes their linked URLs.]

Office Action

If you have received an Office Action from an examining attorney regarding your application (in the form of a regular letter; a Priority Action; an Examiner's Amendment/Priority Action (where a response is still required for the "Priority Action" portion;" or a Suspension Inquiry letter), you must respond within six (6) months of the mailing date of the Office action, or your application will be abandoned. If the Office Action is a "Priority Action," responding within two (2) months will give you priority handling; however, you do have the full six (6) month response period, if necessary). This means that your response must arrive on the USPTO server prior to Midnight, Eastern Standard Time, of the last day of the response period- any problem with transmission will not excuse an untimely response. Should the last day of the response period fall on a Saturday, Sunday or U.S. Federal Holiday, you may submit your response prior to Midnight, Eastern Standard Time, of the next regular business day, and it will still be considered "timely." You should respond to each point raised in the Office Action Form fully and completely.

Voluntary Amendment

If, after filing but prior to examination by the assigned attorney, you wish to amend or supplement your original filing, you may submit a voluntary amendment, i.e., voluntary to examination. You should, however, ensure that the original submission has been assigned to a particular law office, as this will assist the USPTO in matching your voluntary amendment with the initial filing. To verify assignment to a law office, click on [http://tsdr.uspto.gov/ ]

Examiner's Amendment

Whenever possible, the examining attorney will attempt to resolve all issues, but for the payment of fees issue, via a telephone call. If the only remaining issue is the payment issue, you may use the response form to make the proper payment, either by credit card, electronic funds transfer, or through an already-established USPTO deposit account.

Trademark Rule 2.33

Under this rule, "A person who is properly authorized to sign on behalf of the applicant is:

a person with legal authority to bind the applicant; or

a person with firsthand knowledge of the facts and actual or implied authority to act on behalf of the applicant; or

an attorney as defined in §10.1(c) of this chapter who has an actual or implied written or verbal power of attorney from the applicant."

Timely

If you have received an Office Action from an examining attorney regarding your application (in the form of a regular letter; a Priority Action; an Examiner's Amendment/Priority Action (where a response is still required for the "Priority Action" portion;" or a Suspension Inquiry letter), you must respond within six (6) months of the mailing date of the Office action or your application will abandon. If the Office Action is a "Priority Action," responding within two (2) months will give you priority handling; however, you do have the full six (6) month response period, if necessary. This means that your response must arrive on the USPTO server prior to Midnight, Eastern Standard Time, of the last day of the response period- any problem with transmission will not excuse an untimely response. Should the last day of the response period fall on a Saturday, Sunday or U.S. Federal Holiday, you may submit your response prior to Midnight, Eastern Standard Time, of the next regular business day and it will still be considered timely.

Any type of file

This covers regular letters; Priority Actions; Examiner's Amendment/Priority Actions (where a response is still required for the "Priority Action" portion); Suspension letters; and Suspension Inquiry letters. NOTE: A specific form for responding to Suspension letters and Suspension Inquiry letters is being developed, and once deployed, must be used for that specific purpose, rather than the response to Office action form.

Extend the time limit

The 60-minute period is not an "absolute" period; i.e., you do not have to complete the form, start to finish, within 60 minutes. If the USPTO's server does not detect any activity at all within 60 minutes, it will end your session at the 60-minute point. HOWEVER, at 54 minutes into your session, you will receive a pop-up window warning you that your session will expire in six minutes (it will actually provide the precise "end" time within the window, such as 11:29:14 EST). To "renew" your session, you simply need to click on the "O.K." button at the bottom of the pop-up window, and you will automatically get another 60 minute time period. If you do not click on the button within the remaining six minutes of the session, your session will completely end at the 60-minute mark, and you will be returned directly to the initial form wizard to start the process again.

Serial Number

Enter the 8-digit USPTO assigned serial number; e.g., 78658234.

Previously-saved data

You may save your Response to Office Action form for submission at a later time by clicking on the Download Portable Data button at the bottom of the Validation page. The process for then accessing the saved data from your local drive is NOT the same as for a "regular" TEAS initial application (but, rather, now matches the approach that is used in the "TEAS Plus" version of an initial application). I.e., do NOT simply click on the icon for the saved form on your local drive as you would have done with the "old" version of the Response to Office Action form (prior to November 12, 2005), because that simply will pull up a document displaying your information in the XML format, which cannot be edited. Instead, you must (1) go to the first page of the response form, as if you were going to start a new form (even though you have already completed a form and saved it); (2) Click on the "Browse/Choose File" button that appears above where the wizard questions begin; (3) Using the displayed pop-up box, find the saved data on your local drive; (4) click on "Open;" (5) the file name should now appear in the window before the Browse/Choose File button; (6) Click on the "Continue" button at the very bottom of the page; and (7) the actual form, with all of your previously-entered data, will now display, EXCEPT any previously-attached image files, which must now be re-attached.

Specifying the exact changes

You must spell out the exact changes that the examining attorney is to consider in your response. If the examining attorney has requested certain language, then you must repeat that language in the proper portion of the response. Even if you are agreeing with what the examining attorney may have set forth in the Office action, you must repeat this information in your response.

Original Office Action

The application was declared abandoned because you did not file a response within six (6) months (the prescribed statutory period) from the mailing date of an office action issued by the assigned examining attorney. If you received the original office action, you must file a response with your petition. If you did not receive the original office action, you do not have to file a response with the petition. If you still do not have a copy of the office action, you should contact [email] the [TrademarkAssistanceCenter@uspto.gov] to request a duplicate copy.

[Trademark Assistance Center (TAC). The Trademark Assistance Center (TAC) provides general information about the trademark registration process and responds to inquiries about the status of trademark applications and registrations. The location of the Trademark Assistance Center is Madison East, Concourse Level, 600 Dulany Street, Alexandria, VA 22314. Telephone assistance is available Monday through Friday (except federal holidays) from 8:30 a.m. to 8:00 p.m. Eastern Time. Walk-in assistance is available Monday through Friday (except federal holidays) from 8:30 a.m. to 5:00 p.m. Eastern Time. You can also check the status of an application or registration through [TSDR database  http://tsdr.uspto.gov/] Trademark Applications and Registrations Retrieval ("TARR") database at http://tarr.uspto.gov/. 800-786-9199 (toll-free) | 571-272-9250 (local)]

Final Refusal

A final refusal is an Office Action that is sent to the applicant after a response to a non-final action has been received by the Office and reviewed by the examining attorney. In the final refusal, the examining attorneys informs the applicant that either the arguments presented in their response did not obviate the grounds for refusing registration or that the information submitted did not satisfy the requirements set forth in the original office action. The status in the TARR [TSDR] database [link to http://tsdr.uspto.gov/] must specifically state that a FINAL action has been mailed. If, instead, the status only references a NON-FINAL action, then an appeal would be premature and should not be filed at this time.

Supporting evidence

You may attach evidence in the form of JPG and/or PDF files. However, please note that submission of an overall response as a JPG/PDF file is NOT permissible; i.e., do not use this section, or any other section, of the form to attach a multi-page document consisting of arguments, evidence, revised identifications of goods/services, additional statements, etc. Any portion of the this form that exists for a specific purpose must be used for that purpose, rather than trying to "shoehorn" a complete ROA within one PDF file. Failure to follow this instruction will cause significant delays in the processing and review of your response.

37 C.F.R. §2.63. Reexamination.

37 C.F.R. §2.63. Reexamination. (a) After response by the applicant, the application will be reexamined or reconsidered. If registration is again refused or any formal requirement[s] is repeated, but the examiner's action is not stated to be final, the applicant may respond again. (b) After reexamination the applicant may respond by filing a timely petition to the Director for relief from a formal requirement if: (1) The requirement is repeated, but the examiner's action is not made final, and the subject matter of the requirement is appropriate for petition to the Director (see §2.146(b)); or (2) the examiner's action is made final and such action is limited to subject matter appropriate for petition to the Director. If the petition is denied, the applicant shall have until six months from the date of the Office action which repeated the requirement or made it final or thirty days from the date of the decision on the petition, whichever date is later, to comply with the requirement. A formal requirement which is the subject of a petition decided by the Director may not subsequently be the subject of an appeal to the Trademark Trial and Appeal Board.

Additional Fee

Each separate international class of goods and/or services requires its own fee, even if the mark is the same. If your goods and/or services are properly placed in more than one international class, but you have not paid the filing fee(s) for all classes, you must now pay the additional fee(s) for all other classes to continue prosecution of those, if you wish to continue prosecution of the other classes. You will be able to designate whether the fee(s) to be paid are at the level for a TEAS Plus application, or a regular TEAS application. You will also be able to pay the required $50 fee per class if the examining attorney has determined that the application filed on the TEAS Plus form did not, in fact, satisfy all of the requirements for that type of application.

Losing TEAS Plus status

A requirement for filing under TEAS Plus is that the application be "complete." If the examining attorney has determined that you failed to satisfy all TEA Plus requirements, you must now pay an extra $50 fee since TEAS Plus status has now been lost. This represents the difference between the fee amount for a TEAS Plus filing and a "regular" TEAS application.

Substantive Refusal

If the examining attorney has refused your mark for any substantive legal reason, you are entitled to submit arguments in support of registration. You should simply and completely address the points raised by the examining attorney in the Office Action. You are not required to provide case law support, although you may, as appropriate. If the examining attorney is convinced by your arguments, the examining attorney will withdraw the refusal(s). If not convinced, and assuming there are no other outstanding issues, the examining attorney will issue a final refusal. Your options at that point are 1) appeal to the Trademark Trial and Appeal Board (TTAB), an administrative adjudication board; or 2) not respond, which will lead to abandonment of the application. You may still be entitled to use this mark as your "trademark" or "service mark; however, you would not have the rights associated with a federal registration. You should seek the advice of an attorney experienced in U.S. trademark matters for a more complete explanation of anything in this form you do not understand or for any other legal advice relating to the use and/or registration of your trademark or service mark. The USPTO cannot recommend an individual attorney or law firm.

Attach Evidence

At the proper place in the form, you may attach image files of evidence that support the registrability of your mark; for example, dictionary excerpts, copies of relevant articles, web sites, etc. To attach anything as evidence, you must first scan the evidence into a JPG or PDF image file. Once this is done, you can then click on the browse button at the appropriate place in the form to select the JPG/PDF image file(s) stored on your local drive that contains the piece of evidence.

ADD a new class of goods and/or services

It is appropriate to add a new class of goods and/or services only if the goods and/or services existed in the original application, but were simply included as part of an incorrect class. An entirely new listing cannot be added through this form, because it would exceed the scope of the original filing. Any new class requires the payment of an additional fee of $325.00 per class. E.g., if the original identification was for "shirts, jackets, handkerchiefs" in Class 25, then Class 24, the proper class for "handkerchiefs," could be added.

Change an existing classification number

If the original goods and/or services were listed in the incorrect international class, the overall classification can be changed directly in the form. If the examining attorney has proposed a classification, you should adopt that class. If the number of classes that the examining attorney recommends exceeds the number of fees that have been paid, you must either limit the goods and/or services to the number of classes paid or pay the additional fees. For further information about classification, please see What are the different classes of goods and services? Please note that when a class is changed, and then this information is viewed after validation, e.g., in the input format or text form format, it will be displayed as if the class had first been deleted entirely, and then a new class added (with that "new" class showing the new classification number). However, although displayed as an "added" class, it is not truly considered to be a new class; therefore, no additional fee is required.

Modify listing of goods and/or services

If the original listing of goods and/or services is not correct or is not acceptable to the USPTO, you may enter a new listing of goods and/or services. However, this listing must still fall within the "scope" of the original listing. I.e., you may amend from "clothing" to "shirts and pants," but not to "shirts, pants, and retail clothing stores," because "retail clothing stores" was not within the scope of just "clothing." You must enter the complete listing of Goods/Services, regardless of the extent of changes made from the original listing (i.e., even if only one word has been changed, please repeat the entire listing, with relevant changes incorporated). If the examining attorney has suggested a listing, you should adopt that wording, assuming it is correct. If the examining attorney has not been able to suggest a new listing, perhaps because your original listing was simply too broad, please look for acceptable language for the goods and/or services in the USPTO's on-line Goods and/or Services Manual .

Filing basis

Under certain circumstances, a filing basis may be changed, i.e., either amended, deleted, or added. See TMEP Section 806.03 et seq. and TMEP Section 806.04 et seq. for a complete discussion of the rules regarding changes in filing basis.

Dates of use

If the original application was filed under Section 1(b), Intent to Use, this form is not the correct method for now making use dates of record. You must file an Allegation of Use form. Any addition of, or change to, dates of use must be supported by declaration, signed by someone properly authorized to sign on behalf of the applicant under 37 C.F.R. Section 2.33(a). In an application under Section 1(a) of the Trademark Act, the applicant may not amend to specify a date of use that is later than the filing date of the application. In an application under Section 1(b) of the Act in which an amendment to allege use is filed, the applicant may not amend the dates of use to recite dates of use that are subsequent to the filing of the amendment to allege use. However, the applicant may withdraw the amendment to allege use. In an application under Section 1(b), after the applicant files a statement of use, the applicant may not amend to recite dates of use that are subsequent to the expiration of the statutory deadline for filing a statement of use (i.e., within six months of the mailing date of the notice of allowance or before the expiration of an extension of time for filing a statement of use).

Specimen Image

At the proper place in the form, you may attach, for each international class, specimen(s) showing the mark as used in commerce on or in connection with any item listed in the description of goods and/or services. This may be to replace a specimen already of record, or to submit a new specimen, either because the original application did not include a specimen or because a new class is being added, under a Section 1(a), Use in Commerce, basis. To attach the specimen(s), you will click on the browse button to select the JPG/PDF file (the only formats that may be used for this form) stored on your local drive and that contains the specimen(s). Up to fifty (50) image files may be attached. The images may be in color, and must be in color if color is being claimed as a feature of the mark. NOTE: The specimen image is not simply the same as the image of your actual mark by itself. Instead, you must show how you are actually using the mark in commerce. For example, for goods, acceptable specimens would consist of scanned or digitally photographed tags, labels, instruction manuals, or containers that show the mark on the goods or packaging. Invoices, announcements, order forms, bills of lading, leaflets, brochures, publicity releases and other printed advertising material generally are not acceptable specimens for goods. Examples of acceptable service mark specimens are signs, photographs, brochures or advertisements that show the mark used in the sale or advertising of the services.

Submit a foreign registration certificate

You can attach a scanned image, as multiple JPG/PDF files, of the foreign registration certificate. A certified copy of the foreign registration is not required. If the foreign registration is not in English, you must also provide a translation of the foreign registration with the copy of the foreign registration. The translator should sign the translation, but need not swear to the translation. Submission of the copy of the foreign registration certificate is not required to receive a filing date; however, the foreign registration(s) must be in force at the time of filing of the U.S. application, and must be filed before the application may proceed to registration. I.e., the foreign registration must be "live" at the time the United States issues the registration based on that foreign registration.

Applicant or Entity Information

Use this section to change the applicant's name; the applicant's address; the applicant's phone number; the applicant's entity type; the applicant's state/country of citizenship; and/or enter a new correspondence address or Email address.

Change the Mark

If you want to change your mark, e.g., to correct a typographical error in the original submission, you may submit an amended version of the mark. However, not all proposed corrections are automatically accepted. The examining attorney will only permit the new mark after determining that the change is not a material alteration of the mark as originally filed. If, e.g., a completely "wrong" mark was inadvertently filed, the examining attorney will not accept a totally different mark. Even some minor "typographical" errors cannot be amended, because the nature of the change would still amount to a material alteration.

Submit a better quality image

If the examining attorney has required the submission of a new mark image, answer YES and YES to the form wizard questions, and then attach a JPG image file (the only image file type accepted) showing a better quality image of the mark. Please note the following:

1. Mark images should not include the trademark, service mark or registration symbol (™, SM, ®). These symbols should only appear on specimens.

2. Mark images should be submitted with as little white space around the design as possible.

3. All black-and-white jpg images and color jpg images must be scanned at no less than 300 dots per inch and no more than 350 dots per inch, and with a length and width of no less than 250 pixels and no more than 944 pixels; e.g., 640 X 480 pixels is a valid pixel dimension. To ensure your image file meets these requirements, you can use a free graphic viewer, e.g., Irfanview . If you cut-and-paste an image into Irfanview , or open an image file using the program, select "Image" from the tool bar and "Information" from the drop-down choices to view the current DPI and pixel dimensions. If your image is not in the proper dimension, you can use Irfanview  to change the DPI and pixel dimensions: 1) Select "Image" from the tool bar; 2) Select "Resize" from the drop-down choices; 3) Set the DPI to 300 - 350 and change the pixel dimension to within the accepted range of 250 X 944; 4) If the new image file looks acceptable to you in the new dimensions, save the image file, by selecting "File" from the tool bar and using the "Save As" feature to save the file as a JPG image. If the image is not clear, do not submit the image. Instead, seek the assistance of a graphic artist to create the properly-sized jpg file.

4. Mark images submitted as "Black-and-White" images must consist of only two colors, namely, black and white, with no gray areas. To create a true black-and-white image jpg, you must ensure that the image does not include any gray scale or color. When scanning your image file, you should confirm that the settings on your scanner are set to create a black-and-white image, not a color image. If you submit a black-and-white image that has colors associated with it, it will cause the image to appear with the associated colors, as different shades of gray or "gray scale." Or, if the image is scanned in color, it will appear in color. To decrease the color depth in an existing JPG image to only black and white, you can use a free graphic viewer, e.g., Irfanview . If you cut-and-paste an image into Irfanview  you can decrease the color depth to two colors by 1) Selecting "Image" from the tool bar; 2) Selecting "Decrease Color Depth" from the drop down menu; 3) Selecting "2 colors, black and white;" 4) Click "ok;" 5) Confirm view of image as a pure black and white image; 6) Select "File" from the tool bar and use the "Save As" feature to save the file as a JPG image; and 7) Attach this image to your application as your proper black-and-white mark. If you are not able to reproduce your mark as a pure black-and-white image, you should seek the assistance of a graphic artist. NOTE: The form will not "reject" a "black-and-white" image that has colors associated with it. However, if you are claiming a pure black-and-white mark image but the image is not submitted correctly, the examining attorney will require submission of a new image file during the examination process. Also, as of November 2, 2003, the USPTO will not accept black-and-white images with a color claim, or drawings that are lined for color; you must submit an actual color mark image. However, the USPTO will process drawings with stippling as black-and-white drawings, unless shading produces gray tones or gray is a feature of the mark. If so, the USPTO will process the mark as a color mark, and require a color claim. Or, the USPTO will require submission of a new black-and-white image, if it is determined that was the applicant's intent for the mark.

5. If you cannot validate the form after attaching an image file, please try validating the form without the image attached; if successful, try re-saving the image.

6. After validation, you should be able to view your image from the validation page. If you cannot view your images they are not properly attached. NOTE: The Mark image may appear huge when you review the images via the links displayed on the Validation Page, and you may not be able to print them in the proper dimensions from this page (i.e., the mark image must print no larger than 3.15 x 3.15 inches (8 x 8 cms)). This does not indicate that there is a problem with your image file. Current browser and monitor technologies display all images at 72 dpi, causing images scanned at a higher dpi level to appear huge after attachment. The USPTO can process your image file, if you were able to save and print your image attachment from your image creating software in the proper dimensions prior to attaching the image to the form. See #3, above, for details on proper image size.

7. Images created on a Macintosh using Adobe Photoshop or Illustrator must be properly saved with appended file extensions .jpg for use on a Windows system. We cannot open image files that are not properly saved prior to attachment.

8. Internet Explorer on the Macintosh platform will not permit proper image attachment. You must use Netscape or a PC.

9. Adobe Photoshop/Illustrator users must ensure that images are saved with the RGB color scheme. The USPTO cannot accept the CYMK color scheme. If you can open your image with your browser, then it is saved in the RGB color scheme.

10. Do not zip your image files or add any additional compression. JPG files are already compressed.

Material Alteration

The examining attorney will determine whether any proposed amendment of the mark is acceptable. A change is not acceptable if it materially alters the character of the mark. The modified mark must contain what is the essence of the original mark, and the new form must create the impression of being essentially the same mark.

As a general rule, the addition of any element that would require a further search to determine whether a confusingly similar mark exists will constitute a material alteration. Also, deletion of matter from the mark can result in a material alteration. However, the deletion of non-distinctive matter may not constitute a material alteration. For example, the deletion of the generic name of the goods or services would not generally constitute a material alteration, unless it was so integrated into the mark that the deletion would alter the commercial impression. In some circumstances, even descriptive or other types of non-distinctive matter may be deleted, if the overall commercial impression is not altered.

You may not amend to a standard character mark if the deletion of a design element or the elimination of the special form would alter the commercial impression. Usually, the mere amendment from stylized lettering to standard character form will not represent a material alteration. An amendment adding an element that the applicant has previously registered for the same goods or services may be permitted. However, the addition of matter that the applicant has previously registered for different goods or services is not permissible. Any proposed amendment to delete previously registered matter from the mark will be evaluated as to whether the deletion would represent a material alteration of the mark, without regard to whether the matter to be deleted is the subject of an existing registration.

These general rules are subject to exceptions. Each case must be decided on its own facts. The controlling question is always whether the new and old form of the marks create essentially the same commercial impression.

Mark Image

If you are using, or intend to use, your mark in a stylized manner or with a design element, you must attach a JPG image file (the only format that TEAS accepts) showing an image of your mark. At the proper place on the form, you will be instructed to click on the 'Browse' button to select from your local drive the JPG image file. The image may be in black-and-white or in color, depending on what type of protection you are seeking. If color is an important feature of the mark that you wish to protect, you must 1) attach an actual color image of the mark; and 2) use the description of the mark field (under the Additional Statement section) to explain where the color(s) appear in the mark (e.g., "The mark consists of a bird with a blue body, a red head, and a yellow beak.").

Additional Statement: This section is for the entry of various statements that may pertain to the mark. Some or all of these statements may not apply to the mark, and in no case must you enter any of these statements for the application to be accepted for filing (although you may be required to add some of these statements to the record during the actual prosecution of the application). You are limited to certain statements designated by the USPTO (you may NOT enter free-form text for any sort of miscellaneous statement). The following are the texts of the most commonly asserted statements:

DISCLAIMER: "No claim is made to the exclusive right to use _________apart from the mark as shown." (Enter descriptive/generic wording).

STIPPLING AS A FEATURE OF THE MARK: "The stippling is a feature of the mark and does not indicate color." (i.e., the mark consists, in part, of actual "dots"-- the stippling-- as a feature of the mark, rather than those "dots" being an attempt to show coloration or shading in the mark).

STIPPLING FOR SHADING: "The stippling is for shading purposes only." (i.e., the "dots" -- the stippling-- that are used as part of the mark on the drawing page are only to show that the mark has lighter and darker features; the "dots" are not actually part of the mark).

PRIOR REGISTRATION(S): "Applicant claims ownership of U.S. Registration Number(s) __________." (Enter registration number(s) for the same or similar marks. Do not use any commas within the number, and ensure that the entry is 7 numerals long (i.e., if necessary, add leading 0's to number, e.g., 0086417). If there are more than 3 numbers, click the box for "and others" after the third number.)

MARK COLOR: List all colors, including black and/or white, that appear in the mark.

DESCRIPTION OF THE MARK: Enter a description of the mark, and if colors appear in the mark, the location of all of the colors. E.g., if the mark consists of a red bird sitting on a green leaf, you must enter either "a bird sitting on a leaf; the bird is red, the leaf is green" or "a red bird sitting on a green leaf" (with no final punctuation or initial capitalization, and without the introductory words "The mark consists of."

TRANSLATION: "The foreign wording in the mark translates into English as ___________."

TRANSLITERATION: "The non-Latin characters in the mark transliterate into ________, and this means _________ in English."

SIGNIFICANCE OF WORDING, LETTER(S), OR NUMERAL(S): If any word(s), letter(s) or numeral(s) appearing in the mark have a significance in the relevant trade or industry or as applied to the goods/services in the application, you should specify this significance to avoid inquiry by the examining attorney. If it appears that the word(s), letter(s) or numeral(s) may have significance, particularly to someone unfamiliar with the specific usage of the word(s), letter(s) or numeral(s), but in reality the usage is only as a trademark, you should indicate that there is no significance in the relevant trade or industry or as applied to the goods/services listed in the application, no geographical significance, nor any meaning in a foreign language. E.g., "X-10" could be used as a specific model number, and this significance should be noted. If, on the other hand, this is a totally arbitrary designation, then it should be stated that there is no actual significance in the relevant trade or industry.

§2(f), based on Use: "The mark has become distinctive of the goods/services through the applicant's substantially exclusive and continuous use in commerce for at least the five years immediately before the date of this statement."

§2(f), based on Prior Registration(s): "The mark has become distinctive of the goods/services as evidenced by the ownership on the Principal Register for the same mark for related goods or services of U.S. Registration No(s). ____________." (Enter registration number(s) for the same or similar marks. Do not use any commas within the number. If more than one entry, separate each with a space, with no punctuation. e.g., 1247873 1324638 1462387. If there are more than 3 numbers, add "and others" after the third number).

§2(f), based on evidence: "The mark has become distinctive of the goods/services, as demonstrated by the submitted evidence." Evidence to support this claim must be submitted separately, either electronically through the reliminary amendment form, which allows for attachment of up to 50 images, or through a traditional paper submission.

§2(f) IN PART, based on Use: "_______ has become distinctive of the goods/services through the applicant's substantially exclusive and continuous use in commerce for at least the five years immediately before the date of this statement." (Enter the appropriate word(s)).

§2(f) IN PART, based on Prior Registration(s): "______ has become distinctive of the goods/services as evidenced by the ownership on the Principal Register for the same mark for related goods or services of U.S. Registration No(s). ____________." (In the first box, enter the appropriate word(s). In the second box, enter registration number(s) for the same or similar marks. Do not use any commas within the number. If more than one entry, separate each with a space, with no punctuation. e.g., 1247873 1324638 1462387. If there are more than 3 numbers, add "and others" after the third number).

§2(f), IN PART, based on evidence: "_______" has become distinctive of the goods/services, as demonstrated by the submitted evidence." Evidence to support this claim must be submitted separately, either electronically through the voluntary amendment form, which allows for attachment of up to 50 images, or through a traditional paper submission.

NAME(S), PORTRAIT(S), SIGNATURE(S) OF INDIVIDUAL(S): Click on the first circle if the name(s), portrait(s), and/or signature(s) shown in the mark does identify a particular living individual, and enter the appropriate name(s). Click on the second circle if the mark includes a name(s), portrait(s), and/or signature(s), but this does NOT identify a particular living person.

SUPPLEMENTAL REGISTER: An intent-to-use applicant may file an amendment to the Supplemental Register only after the applicant has begun using the mark and filed an amendment to allege use under §1(c) or statement of use under §1(d) that meets minimum filing requirements. In such a case, the effective filing date of the application is the date on which the applicant met the minimum filing requirements for the amendment to allege use or statement of use. 37 C.F.R. §2.75(b); TMEP §1102.03. The applicant may amend to the Supplemental Register after a refusal to register on the Principal Register, including a final refusal. If the final refusal was under §2(e)(1), §2(e)(2) or §2(e)(4) of the Trademark Act, or on grounds pertaining to other non-inherently distinctive subject matter, amendment to the Supplemental Register is procedurally an acceptable response. See 37 C.F.R. §2.75.

CONCURRENT USE: Enter the appropriate concurrent use information, e.g., specify the goods and the geographic area for which registration is sought. For specific requirements, see TMEP section 1207.04.

MISCELLANEOUS STATEMENT: Enter information here ONLY if required in the Response to Office Action and there is no other section of the form that is appropriate.

Signatory
The appropriate person must personally sign the form, i.e.,
       1. a person with legal authority to bind the applicant; or
       2. a person with firsthand knowledge of the facts and actual or implied authority to act on behalf of the applicant; or
       3. an attorney who has an actual or implied written or verbal power of attorney from the applicant.

If there are joint or multiple applicants, or if it is corporate policy to have two or more officers sign for one applicant,
each must sign and provide the relevant information.

Attorney

If an attorney is filing the response to the Office Action, then the attorney should sign the response. Answering "Yes" to this question creates the appropriate signature section at the end of the response. However, this form cannot be used to appoint an attorney or change a previously appointed attorney. An "Attorney Section" will NOT appear in the form if you check "Yes." For further information regarding appointing or changing attorneys, see the Trademark Manual of Examining Procedure Chapter 600 at http://tess2.uspto.gov/tmdb/tmep/pdf/0600.pdf.

Domestic Representative

If the applicant's address is outside the United States, you may wish to designate some person resident in the United States on whom may be served notices or process in proceedings affecting the mark. However, this is no longer required. The designation would serve the purpose of bringing a foreign party who takes advantage of the United States trademark registration system under the jurisdiction of the United States legal system. Any juristic entity may serve as a domestic representative.

Change Of Correspondence Address

Answer YES if you want to change a Correspondence Address, i.e., the postal service address or e-mail address to which the USPTO should send any correspondence. Answer NO if you wish to change either an actual Power of Attorney or Appointment of Domestic Representative, or the physical address of the applicant or owner (which requires a regular amendment). Additionally, answer NO if you wish to change the applicant's name or to transfer ownership of an application or registration from one party to another. Those steps must be done through the Assignments Division. For more information, click here. For an Assignment Recordation Form Cover Sheet (PTO-1594), click here. To access the Change of Correspondence Address Form, click here.

Newly Appearing Attorney

A newly appearing attorney does not include the existing attorney of record or an associate thereof (i.e., an associate of the existing attorney of record should answer NO, even if not a named attorney of record; see TMEP Section 602 et seq. regarding attorneys who may conduct business with the USPTO). A newly appearing attorney must answer YES and complete the "Attorney Section" that appears within the form only if 1) the USPTO has not previously recognized an attorney to prosecute the application on behalf of the applicant; 2) the USPTO has granted the withdrawal of a previously appointed attorney; or 3) the applicant has filed a revocation of the previous power without appointing a new attorney. Filing this form with new information in the "Attorney Section" will electronically update the "Attorney of Record" data in the USPTO's  TARR [TSDR database at http://tsdr.uspto.gov/] and no separate filing of an Appointment of Attorney signed by the applicant is necessary. The USPTO will then recognize you as the applicant's attorney of record.

If you are not the previously appointed attorney or an associate thereof, do not simply file this form to be recognized, unless you satisfy one of the three (3) qualifications listed above. A separate Revocation and new Appointment of Attorney signed by the applicant is required to be properly recognized by the USPTO and update the attorney of record information in the USPTO's database.

Signed Declaration

A signed declaration is not required when originally filing the application. An application filed without a signature will be given a filing date, provided the minimum filing date requirements have been satisfied, namely, those fields designated with a red asterisk on the application form. However, a signed declaration must be provided before the application may be approved for publication. Also, a signed declaration is required when certain changes are made in the application: 1) dates of use are added or modified; 2) a new or additional specimen(s) of use is submitted; 3) a claim of distinctiveness under Section 2(f), based on use, is entered; 4) a claim of distinctiveness under Section 2(f), in part, based on use, is entered; and/or 5) a new filing basis is added (i.e., Section 1(b), Section 44(d), and/or Section 44(e)).

Specific Item

You must provide a signed declaration if you are providing any of the following items as part of the response to office action form: NOTE: These items are all highlighted on the response form by a preceding "#" symbol.

new or modified dates of use

new or additional specimen(s) of use

claim of distinctiveness under Section 2(f), based on use

claim of distinctiveness under Section 2(f), in part, based on use

a new filing basis (i..e., if adding Section 1(b), Section 44(d), and/or Section 44(e))

Text Form

NOTE: If you are completing the response yourself and will be signing the response, you do NOT need to use this option - answer NO to the question, and simply complete the response and enter your signature directly within the posted form.


 

The "text form" is a narrative, paragraph-style version of the response information, absent any "tagged" data fields. It most closely resembles a traditional "Word/ WordPerfect" document, and is accessed from the Validation Screen once the response data is validated. The text form is designed to facilitate signature/date by another party, and no other data can be manipulated; i.e., the "web-based" form may be completed and validated, and then the resulting "text" form may be either

(1) e-mailed to the proper signatory as a "hyperlink" (no "downloading" of a portable form is required). The signatory will sign and date the response declaration by affixing the "electronic signature," consisting of an arbitrary alpha-numeric combination placed between two forward slash symbols (e.g., /john smith/). The signed version automatically is returned to the original preparer, who can then complete the submission process to the USPTO.

NOTE: From the point of validation, you must get the response declaration signed, returned, and filed to the USPTO within 2 weeks. Otherwise, you must complete the process again. You can, however, download and save the portable form (available from the Validation Page) indefinitely.

 

(2) printed out and then mailed or faxed to the signatory, who will sign the response declaration in the traditional "pen-and-ink" manner, and then mail or fax the signed form back to the preparer. The handwritten signed version should then be scanned and re-attached as a JPG/PDF file (the only image formats acceptable) to the original electronic response; the complete response can then be validated and filed electronically.

NOTE: In option 2, the original response must be saved using the Download Portable form button on the Validation Page.


 Directly

The response will not be "signed" in the sense of a traditional paper document. To verify the contents of the response, the signatory will enter any alpha/numeric character(s) or combination thereof of his or her choosing in the signature block on the response form, preceded and followed by the forward slash (/) symbol. The USPTO does not determine or pre-approve what the entry should be, but simply presumes that this specific entry has been adopted to serve the function of the signature. Most signatories simply enter their names between the two forward slashes, although acceptable "signatures" could include /john doe/; /jd/; or /123-4567/.

E-Signature

Through this method, the "text form" may be e-mailed to the proper signatory as a "hyperlink" (no "downloading" of a portable form is required). The signatory will sign and date the response declaration by affixing the "electronic signature," consisting of an arbitrary alpha-numeric combination placed between two forward slash symbols (e.g., /john smith/). The signed version automatically is returned to the original preparer, who can then complete the submission process to the USPTO.

NOTE: From the point of validation, you must get the response declaration signed, returned, and filed to the USPTO within 2 weeks. Otherwise, you must complete the process again. You can, however, download and save the portable form (available from the Validation Page) indefinitely.


 Handwritten ("pen-and-ink") signature

Through this method, the "text form" may be printed out and then mailed or faxed to the signatory, who will sign and date the response declaration in the traditional "pen-and-ink" manner. Once the signed form has been mailed or faxed back to the preparer, this signed declaration must be scanned and re-attached as a JPG/PDF file (the only image formats acceptable) to the original electronic response; the complete response can then be validated and filed electronically.

NOTE: Under this option, the original response must be saved using the Download Portable form button on the Validation Page.


 



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Typical Brand Name Refusals  What is a Family of Marks? What If Someone Files An Opposition Against My Trademark?

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DIY Overcoming Descriptive Refusals

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Published for Opposition     What is Discoverable in a TTAB Proceeding?

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