UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

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.

 

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.

 

IDENTIFICATION OF GOODS

 

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.

 

The identification of goods includes “MENUS, BUSINESS CARDS, NEWSPAPER ADVERTISEMENTS, LABELS.”  However, use of a mark on such items is not considered appropriate trademark use if they are merely incidental items used in conducting an ongoing business enterprise and are not “goods in trade.”  “Goods in trade” are items sold, transported or distributed in commerce for use by others, and provide a use or utility to others.  See 15 U.S.C. §1127; In re S’holders Data Corp., 495 F.2d 1360, 1361, 181 USPQ 722, 723 (C.C.P.A. 1974); TMEP §§1202.06 et seq. 

 

Therefore, applicant must amend the identification of goods to delete any items used merely to conduct its daily business. 

 

The term “restaurant services” is acceptable.

 

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. §2.71(a); TMEP §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.

 

If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the requirements below for those goods and/or services based on actual use in commerce under Trademark Act Section 1(a):

 

(1)        Applicant must list the goods/services by international class;

 

(2)        Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid (current fee information should be confirmed at http://www.uspto.gov); and

 

(3)        For each additional international class of goods and/or services, applicant must submit:

 

a.   Dates of first use of the mark anywhere and dates of first use of the mark in commerce, or a statement that the dates of use in the initial application apply to that class; and the dates of use, both anywhere and in commerce, must be at least as early as the filing date of the application;

 

b.   One specimen showing use of the mark for each class of goods and/or services; and the specimen must have been in use in commerce at least as early as the filing date of the application.  If a single specimen supports multiple classes, applicant should indicate which classes the specimen supports rather than providing multiple copies of the same specimen;

 

c.   A statement that “the specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application;” and

 

d.   Verification of the statements in 3(a) and 3(c) (above) in an affidavit or a signed declaration under 37 C.F.R. §§2.20, 2.33.  Verification is not required where (1) the dates of use for the added class are stated to be the same as the dates of use specified in the initial application, and (2) the original specimens are acceptable for the added class(es).

 

See 37 C.F.R. §§2.34(a)(1), 2.71(c), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

The specimen(s) of record is acceptable for International Class(es) 43 only.

 

Dates of Use 

 

The application does not include the required date of first use in commerce.  Both a date of first use anywhere and a date of first use in commerce must be provided, even if they are the same.  15 U.S.C. §1051(a)(2); 37 C.F.R. §2.34(a)(1)(ii)-(iii); TMEP §§903, 903.03.

 

Therefore, applicant must (1) specify the date of first use of the mark in commerce, and (2) verify this date with an affidavit or signed declaration under 37 C.F.R. §2.20.  See 37 C.F.R. §§2.71(c), 2.193(e)(1); TMEP §903.04.

 

DISCLAIMER REQUIRED

 

Applicant must disclaim the descriptive wording “SEAFOOD RESTAURANT” apart from the mark as shown because it merely describes an ingredient, quality, characteristic, function, feature, purpose or use of applicant’s goods and/or services.  See 15 U.S.C. §§1052(e)(1), 1056(a); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005); In re Gyulay, 820 F.2d 1216, 1217-18, 3 USPQ2d 1009, 1010 (Fed. Cir. 1987); TMEP §§1213, 1213.03(a). 

 

Specifically, the attached evidence from GOOGLE shows this wording is commonly used in connection with applicant’s type of goods and/or services to mean a restaurant that serves seafood.  Therefore, the wording merely describes a characteristic of the services which include a restaurant that services seafood.

 

Applicant may submit the following standardized format for a disclaimer:

                       

No claim is made to the exclusive right to use “SEAFOOD RESTAURANT” apart from the mark as shown.

 

TMEP §1213.08(a)(i); see In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).

 

A “disclaimer” is a statement that applicant does not claim exclusive rights to an unregistrable component of a mark; it does not affect the appearance of the mark.  TMEP§1213.  An unregistrable component of a mark includes wording and designs that are merely descriptive                     of the goods and/or services, and is wording or an illustration that others would need to use to describe or show their goods and services in the marketplace.  15 U.S.C. §1052(e); see TMEP §§1209.03(f), 1213.03 et seq.

 

DRAWING

 

It is unclear from the record whether the submitted drawing was intended to be a standard character drawing.  Clarification is required. There is no standard character claim in the application. If the mark is intended to be in standard characters, then the examining attorney must require that the applicant amend the application to include the standard character claim.

 

The drawing shows the mark with some degree of stylization; thus, it is not clear whether applicant intends to depict the mark in standard characters or in a special form drawing format.  TMEP §807.03(h).

 

A standard character drawing must show the applied-for mark depicted in Latin characters, Roman or Arabic numerals, with common punctuation or diacritical marks, with no design element or stylization of lettering/numbers, and no claim to any particular font, style, size or color.  37 C.F.R. §2.52(a); TMEP §807.03(a).  A special form drawing can include stylization of lettering/numbers, as well as design elements.  37 C.F.R. §2.52(b); TMEP §807.04(a).

 

If a standard character drawing was intended, then applicant must submit the following statement:  “The mark consists of standard characters without claim to any particular font style, size, or color.”  37 C.F.R. §2.52(a); TMEP §807.03(a).  If a special form drawing was intended, then applicant must state so for the record and ensure that an accurate description of the mark is included in the record.  See 37 C.F.R. §2.52(b); TMEP §§807.04 et seq.

 

A standard character drawing shows the applied-for mark depicted in Latin characters, Roman or Arabic numerals, with common punctuation or diacritical marks, with no design element or stylization of lettering/numbers, and no claim to any particular font style, size or color.  37 C.F.R. §2.52(a); TMEP §807.03(a).  A registration for a mark in standard characters affords protection not only for the mark as it appears in standard characters, but also for any possible renderings of the mark, as long as those renderings do not contain any design elements.  In other words, a registered mark in standard characters provides protection of the mark in any lettering style.  See 37 C.F.R. §2.52(a); TMEP §807.03(a).

 

A special form drawing, on the other hand, shows the mark in stylized letters and/or with a design element and provides protection for only that specific rendering.  See 37 C.F.R. §2.52(b); TMEP §§807.04 et seq.

 

 

SEARCH OF THE OFFICE RECORDS DID NOT REVEAL A CONFUSINGLY SIMILAR MARK

 

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.

 

For this application to proceed toward registration, applicant must explicitly address each refusal and/or requirement raised in this Office action.  If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register.  Applicant may also have other options for responding to a refusal and should consider such options carefully.  To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements. 

 

If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end, the trademark will fail to register, and the application fee will not be refunded.  See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a), 2.209(a); TMEP §§405.04, 718.01, 718.02.  Where the application has been abandoned for failure to respond to an Office action, applicant’s only option would be to file a timely petition to revive the application, which, if granted, would allow the application to return to live status.  See 37 C.F.R. §2.66; TMEP §1714.  There is a $100 fee for such petitions.  See 37 C.F.R. §§2.6, 2.66(b)(1).

 

 

 

 

 

/Robert Clark/

Robert Clark

Examining Attorney

Law Office 101

571-272-9144

fax: 571-273-9101

robert.clark@uspto.gov

 

 

TO RESPOND TO THIS LETTER:  Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  Please wait 48-72 hours from the issue/mailing date before using 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 Trademark Applications and Registrations Retrieval (TARR) at http://tarr.gov.uspto.report/.  Please keep a copy of the complete TARR screen.  If TARR shows no change for more than six months, call 1-800-786-9199.  For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

 

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.gov.uspto.report/teas/eTEASpageE.htm.