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:

 

Upon further review the following must issue:

 

Substantive Refusal:

 

Registration is refused because the applied-for mark includes an American flag.  Trademark Act Section 2(b), 15 U.S.C. §1052(b); see TMEP §1204.  Trademark Act Section 2(b) bars registration of marks that include the flag, coat of arms, or other insignia of the United States, any state or municipality, or any foreign nation.  TMEP §1204.

 

The attached evidence from X-search and Google shows that the applied-for mark includes an American Flag.

 

Flags and coats of arms of governments are designs that have been formally adopted to serve as emblems of governmental authority.  U.S. Navy v. U.S. Mfg. Co., 2 USPQ2d 1254 (TTAB 1987); In re U.S. Dep’t of the Interior, 142 USPQ 506 (TTAB 1964); TMEP §1204.02(a).

 

Trademark Act Section 2(b) is an absolute bar to registration on the Principal and Supplemental Registers.  Trademark Act Sections 2(b) and 23(a), (c), 15 U.S.C. §§1052(b), 1091(a), (c); see TMEP §§1204, 1204.04(a).

 

Applicant may respond to this refusal by submitting a substitute drawing showing the flag, coat of arms or other insignia deleted from the drawing.  See TMEP §§807.14(a), 1204.04(b).  However, deletion of the unregistrable matter may only overcome the refusal if the deleted matter is wholly separable from the applied-for mark and its removal does not materially alter the mark.  See TMEP §807.14(a).

 

Other Informalities:

If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informalities.

Disclaimer:

 

If the drawing is amended, applicant must correct the disclaimer to disclaim the descriptive wording “hitch” only apart from the mark as shown because the wording/drawing merely describes where the goods are to be attached to.  Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a).

 

The computerized printing format for the Office’s Trademark Official Gazette requires a standardized format for a disclaimer.  TMEP §1213.08(a)(i).  The following is the standard format used by the Office:

 

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

 

See In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).

Failure to comply with a requirement to disclaim has been held to be a basis for refusal to register before the Act of 1946.  See In re American Cyanamid & Chemical Corp., 99 F.2d 964, 39 USPQ 445 (C.C.P.A. 1938).  Failure to comply with a requirement to disclaim also was held to justify a refusal after the 1946 Act.  See In re Hercules  Fasteners, Inc., 203 F.2d 753, 97 USPQ 355 (C.C.P.A. 1953); Ex parte Knomark Mfg. Co., Inc., 118 USPQ 182 (PO Ex. Ch. 1958).  Even after amendment of the pertinent language of §6 of the 1946 Act to the discretionary wording "may require the applicant to disclaim," registration may be refused if an applicant does not comply with a requirement for disclaimer made by the examining attorney.  See In re Richardson Ink Co., 511 F.2d 559, 185 USPQ 46 (C.C.P.A. 1975); In re National Presto Industries, Inc., 197 USPQ 188 (TTAB 1977); In re Pendleton Tool Industries, Inc., 157 USPQ 114 (TTAB 1968).

 

Description:

 

The description of the mark will be inaccurate because it will not contain an American flag.  Applications for marks not in standard characters must include an accurate and concise description of the entire mark that identifies literal elements as well as any design elements.  See 37 C.F.R. §2.37; TMEP §§808.02, 808.03(d). 

 

Applicant may respond to this refusal by submitting a substitute drawing showing the flag, coat of arms or other insignia deleted from the drawing.  See TMEP §§807.14(a), 1204.04(b).  However, deletion of the unregistrable matter may only overcome the refusal if the deleted matter is wholly separable from the applied-for mark and its removal does not materially alter the mark.  See TMEP §807.14(a).

 

Therefore, applicant must provide a more accurate description of the applied-for mark.  The following is suggested:

 

The mark consists of the wording "HEROES HITCH" featuring a stylized flagpole. 

 

Questions:

 

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.

 

 

/LDA/

Lourdes Ayala, Attorney at Law

Law Office 106

Telephone Number 571-272-9316

Fax: 571-272-9106

Lourdes.Ayala@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.