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(a), 2.65(a); TMEP §§711, 718.03.

 

Search

 

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).

 

Summary of Issues

 

This non-final Office Action contains the following issues that applicant must address:

 

• Description of the mark omitted
• Transliteration/translation of foreign wording
• Disclaimer of particular wording
• Claim of ownership of prior registrations

 

Description of the Mark Omitted

 

Applicant must submit an accurate and concise description of the literal and design elements in the mark.  37 C.F.R. §2.37; see TMEP §§808.01, 808.02.  The following is suggested, if accurate:

 

The mark consists of product packaging for applicant’s goods, namely, the literal and design elements of labels on bottles featuring applicant’s goods. In the center of the bottle are the vertically positioned non-latin characters that transliterate to “CHA LI WANG”. At the bottom of the mark appears a wide bowl with a leaf and a droplet. Two horizontal lines with shading run across the width of the mark, one above the non-latin characters, and one below, immediately above the bowl and leaf design. The bottle shape is only shown for positioning and is not claimed as a feature of the mark.

 

Applicant must depict the mark in the drawing to include broken or dotted lines to show the position of the mark on the goods or container.  37 C.F.R. §2.52(b)(4); TMEP §§807.08, 1202.02(c)(i).  Applicant must show the mark itself using solid lines.  See 37 C.F.R. §§2.52(c), 2.54(e); TMEP §§807.05(c), 807.06(a).

 

In addition to these drawing requirements, applicant must also submit a clear and concise description of the mark that does the following: 

 

(1) Indicates that the mark is a three-dimensional configuration of the goods or their packaging or of a specific design feature of the goods or packaging;

 

(2) Specifies all the elements in the drawing that constitute the mark and are claimed as part of the mark; and

 

(3) Specifies any elements which are not part of the mark and indicates that the matter shown in broken or dotted lines is not part of the mark and serves only to show the position or placement of the mark. 

 

See 37 C.F.R. §§2.37, 2.52(b)(2), (b)(4); In re Famous Foods, Inc., 217 USPQ 177, 178 (TTAB 1983); TMEP §§807.08, 807.10, 1202.02(c)(ii).

 

Translation / Transliteration of Foreign Wording

 

Applicant must submit (1) a statement translating the non-English wording in the mark, and (2) a statement transliterating any non-Latin characters in the mark, with either a translation of the corresponding non-English wording or a statement that the transliterated term has no meaning in a foreign language.  37 C.F.R. §2.32(a)(10); TMEP §809.  A transliteration is the phonetic spelling, in Latin characters, of the terms in the mark that are in non-Latin characters.

 

If the transliterated wording has an English translation, applicant should submit the following translation and transliteration statement, if accurate:

 

The non-Latin characters in the mark transliterate to “CHA LI WANG” and this means “KING IN TEA” in English.

 

TMEP §809.03. 

 

Disclaimer

 

The English translation of non-English wording that is merely descriptive, deceptively misdescriptive, geographically descriptive, or generic in connection with the identified goods and/or services, is an unregistrable component of the mark.  TMEP §1213.08(d); see Bausch & Lomb Optical Co. v. Overseas Fin. & Trading Co., 112 USPQ 6, 8 (Comm'r Pats. 1956).  Therefore, it is subject to a proper disclaimer requirement in the same way that the English version of such wording would be subject to a disclaimer.  See TMEP §§1213.03(a), 1213.08(d) Please see the attached third-party registrations featuring disclaimers of the wording “CHA” which has been translated to mean tea in the registrations, when used in conjunction with tea and tea related goods.

 

For a disclaimer of non-Latin characters, applicant must disclaim the non-Latin characters with a reference to its transliteration in Latin characters.  TMEP §1213.08(d).  The following is the standardized format for a disclaimer:

 

No claim is made to the exclusive right to use the non-Latin characters that transliterate to “CHA” apart from the mark as shown.

 

Id.

 

Claim of Ownership of Prior Registrations

 

If applicant owns U.S. Registration Nos. 3090613 and 3090612, then applicant must submit for the application record a claim of ownership of these registrations.  See 37 C.F.R. §2.36; TMEP §812.  See the attached copies of the registrations.  See TMEP §812. 

 

Applicant may use the following format to claim ownership of these registrations:

 

Applicant is the owner of U.S. Registration Nos. 3090613 and 3090612.

 

Assistance

 

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §2.191; TMEP §§304.01-.02, 709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

/Jordan A. Baker/

Trademark Examining Attorney

Law Office 102

571-272-8844

jordan.baker@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.