To:
`
`Subject:
`
`Sent:
`Sent As:
`
`JEROMYE SARTAIN(docketing@masterkeyip.com)
`U.S. Trademark Application Serial No. 90717679 - AARON SACHS &
`ASSOCIATES, P.C. AUTOINJURY.COM - AASA.003.UST
`January 19, 2024 09:58:37 AM EST
`tmng.notices@uspto.gov
`
`Attachments
`
`2024-01-19_09-00-44.jpg
`2024-01-19_09-02-37.jpg
`2024-01-19_09-44-39.jpg
`2024-01-19_09-44-51.jpg
`2024-01-19_09-44-57.jpg
`2024-01-19_09-45-12.jpg
`2024-01-19_09-45-25.jpg
`2024-01-19_09-45-35.jpg
`2024-01-19_09-45-59.jpg
`2024-01-19_09-46-09.jpg
`2024-01-19_09-46-23.jpg
`2024-01-19_09-47-34.jpg
`2024-01-19_09-47-53.jpg
`
`United States Patent and Trademark Office (USPTO)
`Office Action (Official Letter) About Applicant’s Trademark Application
`
`U.S. Application Serial No.  90717679
`
`Mark:   AARON SACHS & ASSOCIATES, P.C. AUTOINJURY.COM
`
`Correspondence Address:  
`Jeromye Sartain
`MASTER KEY IP, LLP
`1113 MURFREESBORO ROAD, SUITE 106-514
`FRANKLIN TN 37064
`UNITED STATES
`
`Applicant:   Aaron Sachs and Associates, P.C.
`
`Reference/Docket No.  AASA.003.UST
`
`Correspondence Email Address:   docketing@masterkeyip.com
`
`
`
`
`
`
`REQUEST FOR RECONSIDERATION AFTER FINAL ACTION DENIED
`
`Issue date:   January 19, 2024
`
`

`

`Applicant’s request for reconsideration is denied.   See 37 C.F.R. §2.63(b)(3).  The trademark
`examining attorney has carefully reviewed applicant’s request and determined the request did not:  (1)
`raise a new issue, (2) resolve all the outstanding issue(s), (3) provide any new or compelling evidence
`with regard to the outstanding issue(s), or (4) present analysis and arguments that were persuasive or
`shed new light on the outstanding issue(s).  TMEP §§715.03(a)(ii)(B), 715.04(a).  
`
`Specifically, applicant's additional Section 2(f) in part evidence failed to meet applicant's burden of
`showing that the wording AUTOINJURY.COM alone has acquired distinctiveness. Most of the
`evidence depicted the wording AUTOINJURY.COM shown used with applicant's AARON SACHS &
`ASSOCIATES mark in a manner that does not show that consumers would perceive this wording alone
`as a mark. Some of the evidence shows the URL in the mark used next to applicant's phone number,
`which suggests that consumers would perceive it as informational wording directing them to the URL
`of applicant's website. 
`
`Additionally, the evidence only showed advertising efforts in Missouri and did not reflect the kind of
`nationwide exposure that supports a claim of acquired distinctiveness in part. The attached evidence
`and evidence of record in the request for reconsideration showing applicant's website substantiates the
`local nature of applicant's advertising efforts. Applicant advertises on its website that it serves three
`areas within Missouri and only accepts cases in the five surrounding states. So applicant's advertising
`efforts, however extensive they may be locally, do not appear to have the national reach that would
`support a claim of acquired distinctiveness in U.S. commerce.
`
`Therefore, the request for reconsideration is denied. 
`
`Accordingly, the following requirement(s) and/or refusal(s) made final in the Office action dated June
`26, 2023 are maintained and continued: 
`
`
`•
`
`Disclaimer Required
`
`
`See TMEP §§715.03(a)(ii)(B), 715.04(a).  
`
`If applicant has already filed an appeal with the Trademark Trial and Appeal Board, the Board will
`be notified to resume the appeal.   See TMEP §715.04(a).  
`
`If applicant has not filed an appeal and time remains in the response period for the final Office
`action, applicant has the remainder of that time to (1) file another request for reconsideration that
`complies with and/or overcomes any outstanding final requirement(s) and/or refusal(s), and/or (2) file a
`notice of appeal to the Board.  TMEP §715.03(a)(ii)(B).
`
`
`/Robert Guliano/
`Robert Guliano
`Examining Attorney
`LO105--LAW OFFICE 105
`(571) 272-0174
`Robert.Guliano@USPTO.GOV
`
`
`
`

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`Office Action (Official Letter) has issued
`on January 19, 2024 for
`U.S. Trademark Application Serial No.  90717679
`
`A USPTO examining attorney has reviewed your trademark application and issued an Office
`action.  You must respond to this Office action to avoid your application abandoning.  Follow
`the steps below.  
`
`(1)   Read the Office action.  This email is NOT the Office action.  
`
`(2)  Respond to the Office action by the deadline using the Trademark Electronic Application
`System (TEAS) or the Electronic System for Trademark Trials and Appeals (ESTTA), as
`appropriate.  Your response and/or appeal must be received by the USPTO on or before 11:59
`p.m. Eastern Time of the last day of the response deadline.  Otherwise, your application will
`be abandoned.  See the Office action itself regarding how to respond.  
`
`(3)  Direct general questions about using USPTO electronic forms, the USPTO website, the
`application process, the status of your application, and whether there are outstanding deadlines
`to the Trademark Assistance Center (TAC).  
`
`After reading the Office action, address any question(s) regarding the specific content to the
`USPTO examining attorney identified in the Office action.  
`
`GENERAL GUIDANCE
`Check the status of your application periodically in the Trademark Status &
`•
`Document Retrieval (TSDR) database to avoid missing critical deadlines.  
`
`•
`
`•
`
`Update your correspondence email address to ensure you receive important USPTO
`notices about your application.  
`
`Beware of trademark-related scams .  Protect yourself from people and companies that
`may try to take financial advantage of you.  Private companies may call you and pretend
`to be the USPTO or may send you communications that resemble official USPTO
`documents to trick you.  We will never request your credit card number or social security
`number over the phone.  Verify the correspondence originated from us by using your
`serial number in our database, TSDR, to confirm that it appears under the “Documents”
`tab, or contact the Trademark Assistance Center.  
`
`

`

`•
`
`Hiring a U.S.-licensed attorney .   If you do not have an attorney and are not required to
`have one under the trademark rules, we encourage you to hire a U.S.-licensed attorney
`specializing in trademark law to help guide you through the registration process.  The
`USPTO examining attorney is not your attorney and cannot give you legal advice, but
`rather works for and represents the USPTO in trademark matters.  
`
` 
`