Offc Action Outgoing

PLEASE NOTE: In order to expedite the application, applicant is encouraged to telephone the trademark examining attorney to resolve the issue(s) raised below by Examiner’s Amendment.

Search Results

The Office records have been searched and there are no similar registered or pending marks that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.

Applicant must however respond to the following requirement(s) before the mark can be approved for publication.

Section 2(f) Claim - Insufficient

Applicant, in its application, assert acquired distinctiveness based on five years’ use in commerce of the term “USA.” However, because the applied-for mark is highly descriptive of applicant’s goods and/or services, the allegation of five years’ use for the term “USA” is insufficient to show acquired distinctiveness as to this portion of the mark. In re Kalmbach Publ’g Co., 14 USPQ2d 1490 (TTAB 1989); TMEP §1212.05(a). Additional evidence is needed. Also, applicant must amend its distinctiveness claim to assert “2(f) in part as to USA.”

Evidence of acquired distinctiveness may include specific dollar sales under the mark, advertising figures, samples of advertising, consumer or dealer statements of recognition of the mark as a source identifier, affidavits, and any other evidence that establishes the distinctiveness of the mark as an indicator of source. See 37 C.F.R. §2.41(a); In re Ideal Indus., Inc., 508 F.2d 1336, 184 USPQ 487 (C.C.P.A. 1975); In re Instant Transactions Corp., 201 USPQ 957 (TTAB 1979); TMEP §§1212.06 et seq. The Office will decide each case on its own merits.

If additional evidence is submitted, the following factors are generally considered when determining acquired distinctiveness: (1) length and exclusivity of use of the mark in the United States by applicant; (2) the type, expense and amount of advertising of the mark in the United States; and (3) applicant’s efforts in the United States to associate the mark with the source of the goods and/or services, such as unsolicited media coverage and consumer studies. See In re Steelbuilding.com, 415 F.3d 1293, 1300, 75 USPQ2d 1420, 1424 (Fed. Cir. 2005). A showing of acquired distinctiveness need not consider all of these factors, and no single factor is determinative. In re Steelbuilding.com, 415 F.3d at 1300, 75 USPQ2d at 1424; see TMEP §§1212 et seq.

In the alternative, if applicant believes that “USA” has acquired distinctiveness, i.e., that it has become a source indicator for the goods and/or services, then applicant can amend the application to include a claim of distinctiveness under Trademark Act Section 2(f) as to that portion of the mark. See 15 U.S.C. §1052(f); TMEP §1212.02(f).

Applicant can seek registration on the Principal Register under Trademark Act Section 2(f) by claiming acquired distinctiveness through ownership of U.S. Registration No(s). 2991386 and 2991387. See 15 U.S.C. §1052(f); TMEP §§1212.04 et seq. To do so, applicant must submit the following statement, if accurate:

The “USA” portion of the mark has become distinctive of the goods and/or services as evidenced by ownership of U.S. Registration No(s). 2991386 and 2991387 on the Principal Register for the same mark for related goods and/or services.

TMEP §1212.04(e); see 37 C.F.R. §2.41(b).

Response Guidelines

There is no required format or form for responding to an Office action. The Office recommends applicants use the Trademark Electronic Application System (TEAS) to respond to Office actions online at http://www.gov.uspto.report/teas/index.html. If applicant requires assistance using TEAS to file a response, or has any other technical questions, please contact the Trademark Assistance Center (TAC) at 1-800-786-9199.

However, if applicant responds on paper via regular mail, the response should include the title “Response to Office Action” and the following information: (1) the name and law office number of the examining attorney, (2) the serial number and filing date of the application, (3) the mailing date of this Office action, (4) applicant’s name, address, telephone number and e-mail address (if applicable), and (5) the mark. 37 C.F.R. §2.194(b)(1); TMEP §302.03(a).

The response should address each refusal and/or requirement raised in the Office action. If a refusal has issued, applicant can argue against the refusal; i.e., applicant can submit arguments and evidence as to why the refusal should be withdrawn and the mark should register. To respond to requirements, applicant should set forth in writing the required changes or statements and request that the Office enter them into the application record.

The response must be personally signed or the electronic signature manually entered by applicant or someone with legal authority to bind applicant (i.e., a corporate officer of a corporate applicant, the equivalent of an officer for unincorporated organizations or limited liability company applicants, a general partner of a partnership applicant, each applicant for applications with multiple individual applicants). TMEP §§605.02, 712.

Please note that all references to the TMEP are to the Trademark Manual of Examining Procedure and can be found at http://tess2.gov.uspto.report/tmdb/tmep/.

If applicant has any questions about its application, please telephone the assigned trademark examining attorney.

Jaclyn N. Kidwell

/Jaclyn N. Kidwell/

Trademark Examining Attorney

Law Office 112

Tel: 571-272-8196

Fax: 571-273-8196

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.