UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/691951
MARK: TAI CHI
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CORRESPONDENT ADDRESS: |
RESPOND TO THIS ACTION: http://www.gov.uspto.report/teas/eTEASpageD.htm
GENERAL TRADEMARK INFORMATION: http://www.gov.uspto.report/main/trademarks.htm
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APPLICANT: Diamond Hong, Inc.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.
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, 2.65(a); TMEP §§711, 718.03.
SEARCH OF OFFICE’S DATABASE OF MARKS
The following formats are acceptable for a translation and transliteration statement:
The non-Latin characters in the mark transliterate to “_________________________,” and this means “______________________” in English.
The non-Latin characters in the mark transliterate to “______________________,” and this has no meaning in a foreign language.
TMEP §809.02.
Therefore, applicant must provide a description of the applied-for mark. The following is suggested:
The mark consists of a man engaged in a tai chi position atop a yin-yang symbol with the term “TAI CHI” below the symbol and a Chinese character on each side of the symbol .
The applicant must insert a disclaimer of “TAI CHI” in the application because the term(s) is/are merely descriptive of the goods and/or services. Trademark Act Section 6, 15 U.S.C. Section 1056; TMEP sections 1213 and 1213.08(a)(i). Please see attached dictionary definition.
Trademark Act Section 6(a), 15 U.S.C. Section 1056(a), states that the Commissioner may require the applicant to disclaim an unregistrable component of a mark. Trademark Act Section 2(e), 15 U.S.C. Section 1052(e), bars the registration of a mark which is merely descriptive or deceptively misdescriptive, or primarily geographically descriptive of the goods. Therefore, the Commissioner may require the disclaimer of a portion of a mark which, when used in connection with the goods or services, is merely descriptive or deceptively misdescriptive, or primarily geographically descriptive. If an applicant does not comply with a disclaimer requirement, the examining attorney may refuse registration of the entire mark. TMEP section 1213.01(b).
A disclaimer does not remove the disclaimed matter from the mark. It is simply a statement that the applicant does not claim exclusive rights in the disclaimed wording or design apart from the mark as shown in the drawing.
The following cases explain the disclaimer requirement more fully: In re Kraft, Inc., 218 USPQ 571 (TTAB 1983); In re EBS Data Processing, Inc., 212 USPQ 964 (TTAB 1981); In re National Presto Industries, Inc., 197 USPQ 188 (TTAB 1977); In re Pendleton Tool Industries, Inc., 157 USPQ 114 (TTAB 1968).
The computerized printing format for the Trademark Official Gazette requires a standard form for a disclaimer. TMEP section 1213.08(a)(i). A properly worded disclaimer should read as follows:
No claim is made to the exclusive right to use “TAI CHI” apart from the mark as shown.
See In re Owatonna Tool Co., 231 USPQ 493 (Comm'r Pats. 1983).
CLASSIFICATION OF GOODS/SERVICES
The wording “herbal extracts” and “ginseng,” in International Class 5, “vegetables and marine products and seafood,” in International Class 29, and “malt beverage,” in International Class 32, in the identification of goods is unacceptable as indefinite, as indicated below. The applicant must amend the identification to specify the commercial name of the goods and/or the industry or field in which the goods are used, as indicated below in the suggested identification. If there is no common commercial name for the product, the applicant must describe the product and its uses. TMEP section 1402.01. Moreover, the applicant has identified goods that may be classified in separate classes.
It is the applicant's duty and prerogative to identify the goods and services. TMEP Section 1402.02(d). The identification of goods or services should be clear, accurate and as concise as possible. See Procter & Gamble Co. v. Economics Laboratory, Inc., 175 USPQ 505 (TTAB 1972); In re Cardinal Laboratories, Inc., 149 USPQ 709 (TTAB 1966); California Spray-Chemical Corp. v. Osmose Wood Preserving Co. of America, Inc., 102 USPQ 321 (Comm'r Pats. 1954); Ex parte A.C. Gilbert Co., 99 USPQ 344 (Comm'r Pats. 1953). Furthermore, the identification of goods and services must be specific and definite. In re Societe Generale des Eaux Minerales de Vittel S.A., 1 USPQ2d 1296 (TTAB 1986), rev'd on other grounds, 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987). TMEP Section 1402.01.
The Acceptable Identification of Goods and Services Manual sets out acceptable language for identifying goods and services of various types. Utilizing identification language from the Manual may enable trademark owners to avoid problems relating to indefiniteness with respect to the goods or services identified in their applications for registration; however, applicants should note that they must assert actual use in commerce or a bona fide intent to use the mark in commerce for the goods or services specified. TMEP Section 1402.04.
For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.
Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted. 37 C.F.R. Section 2.71(b); TMEP section 1402.06. Therefore, the applicant may not amend to include any goods that are not within the scope of goods set forth in the present identification.
The applicant may adopt one or more of the following, if accurate:
“Cosmetics; skin care preparations, namely, body balm; body oils and essential oils,” in International Class 3;
“Dietary supplements; medicinal herbal extracts; sticking plasters for medical purposes; herbal topical creams, gels, powder, liniment and ointments for the relief of aches and pain; anti-inflammatory ointments; ginseng for medical use,” in International Class 5;
“Edible bird’s nests; canned or bottled fruits; processed ginseng for use as a vegetable; processed vegetables; fish; seafood; and processed fruits,” in International Class 29;
“Processed herbs; processed ginseng used as an herb; herbal food beverages; royal jelly for food purposes; and tea,” in International Class 30;
“Beer; and malt liquor,” in International Class 32; and/or
“Wine; distilled spirits; and liqueurs,” in International Class 33.
SPECIMEN REQUIRED FOR INTERNATIONAL CLASS 5 AND 29
In this case, the specimens show use of the proposed mark on tea, which only satisfies use for the goods identified in International Class 30.
Therefore, applicant must submit the following:
(1) A substitute specimen showing use of the mark for each class of goods and/or services specified in the application; and
(2) The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “The specimen was in use in commerce at least as early as the filing date of the application.” 37 C.F.R. §2.59(a); TMEP §904.05. If submitting a specimen requires an amendment to the dates of use, applicant must also verify the amended dates. 37 C.F.R. §2.71(c).
Examples of specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the goods or packaging, or displays associated with the goods at their point of sale. TMEP §§904.03 et seq. Examples of specimens for services are signs, photographs, brochures, website printouts or advertisements that show the mark used in the sale or advertising of the services. TMEP §§1301.04 et seq.
If applicant cannot satisfy the above requirements, applicant may amend the Section 1(a) filing basis (use in commerce) to Section 1(b) (intent to use basis), for which no specimen is required. However, should applicant amend the basis to Section 1(b), registration cannot be granted until applicant later amends the application back to use in commerce by filing an acceptable allegation of use with a proper specimen. 15 U.S.C. §1051(c); 37 C.F.R. §§2.76, 2.88; TMEP Chapter 1100.
In order to amend to Section 1(b), applicant must submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “Applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application as of the filing date of the application.” 15 U.S.C. §1051(b); 37 C.F.R. §§2.34(a)(2), 2.35(b)(1); TMEP §806.03(c).
Pending a proper response, registration is refused because the specimen does not show the applied-for mark in use in commerce as a trademark or service mark for the identified goods or services. 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56; TMEP §§904, 904.07(a).
/Alec Powers/
Trademark Examining Attorney
US Patent and Trademark Office
Law Office 101
Phone: 571-272-9309
Fax: 571-273-9101
RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the form at http://www.gov.uspto.report/teas/eTEASpageD.htm, waiting 48-72 hours if applicant received notification of the Office action via e-mail. For technical assistance with the form, please e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned examining attorney. Do not respond to this Office action by e-mail; the USPTO does not accept e-mailed responses.
If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response. Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.
STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov. When conducting an online status check, print and maintain a copy of the complete TARR screen. If the status of your application has not changed for more than six months, please contact the assigned examining attorney.