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.

 

Please note that the below issues may be resolved in an expedited manner by contacting the examining attorney.

 

 

Color Mark – Description Statement and Amended Color Claim Required

 

The applied-for mark is in color, and the application includes a color claim listing the colors orange and blue as a feature of the mark.  The following amendments are required with regard to the color features of the mark.

 

(1) Color Claim – amendment required.  Because applicant is claiming color as a feature of the mark, the color claim in the application must reference all the colors in the mark – including, in this case, the color white that is used for the wording and as outlining around the diagonal bars.  TMEP §807.07(d); see 37 C.F.R. §§2.37, 2.52(b)(1). 

 

Accordingly, the color claim must be amended to read as follows:

 

            The colors orange, blue and white are claimed as a feature of the mark.

 

(2) Description of the Mark statement required.  As just noted above, applicant has submitted a color drawing and provided a color claim; however, no description of the mark was included in order to specify the locations of the claimed colors in the literal and design elements in the mark.  See 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §807.07(a)-(a)(ii).

 

Therefore, applicant must provide a mark description that specifies where all the colors appear in the literal and design elements in the mark.  See TMEP §807.07(a)(ii).  The following is suggested to resolve this issue:

 

The mark consists of the wording “THE GROUP” in large white lettering, with the phrase “AUTOMOTIVE PARTS SERVICES GROUP” appearing underneath in smaller white lettering. To the left of the wording are two parallel diagonal bars outlined in white, with the first being orange and the second blue in color. A blue rectangle surrounds the wording and design elements.

 

 

Disclaimer Requirement

 

Applicant must disclaim all of the wording in the mark because it merely describes key aspects of applicant’s services, and thus is an unregistrable component of the mark.  See 15 U.S.C. §§1052(e)(1), 1056(a); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); TMEP §§1213, 1213.03(a). 

 

Specifically, the full phrase “AUTOMOTIVE PARTS SERVICES GROUP” describes the fact that applicant is a business group or network that specializes in retail and wholesale services in the field of auto parts; and the wording “THE GROUP” is a shortened version of the full phrase that is clearly referring to the business entity referenced in the complete phrase.

 

In this regard, please see the attached examples of numerous third-party registrations showing consistent descriptive treatment of similar phrases.  In addition, the examining attorney has included an excerpt about one of applicant’s officers, with the article describing applicant as “the Automotive Parts Services Group (The Group)” – thus emphasizing the fact that the phrase “THE GROUP” is intended to be a shortened version of the longer entity descriptor used in the complete phrase “AUTOMOTIVE PARTS SERVICES GROUP.”

 

An applicant may not claim exclusive rights to terms that others may need to use to describe their goods and/or services in the marketplace.  See Dena Corp. v. Belvedere Int’l, Inc., 950 F.2d 1555, 1560, 21 USPQ2d 1047, 1051 (Fed. Cir. 1991); In re Aug. Storck KG, 218 USPQ 823, 825 (TTAB 1983).  A disclaimer of unregistrable matter does not affect the appearance of the mark; that is, a disclaimer does not physically remove the disclaimed matter from the mark.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 978, 144 USPQ 433, 433 (C.C.P.A. 1965); TMEP §1213. 

 

If applicant does not provide the required disclaimer, the USPTO may refuse to register the entire mark.  See In re Stereotaxis Inc., 429 F.3d 1039, 1040-41, 77 USPQ2d 1087, 1088-89 (Fed. Cir. 2005); TMEP §1213.01(b).

 

Applicant should submit a disclaimer in the following standardized format:

 

No claim is made to the exclusive right to use “THE GROUP” and “AUTOMOTIVE PARTS SERVICES GROUP” apart from the mark as shown.

 

For an overview of disclaimers and instructions on how to satisfy this disclaimer requirement online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/disclaimer.jsp.

 

 

 

Search of Office Database – No Conflicting Marks Noted

 

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).

 

 

 

 

 

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. §§2.62(c), 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.

 

Please note:  The above issues may be resolved by an Examiner’s Amendment, and applicant is encouraged to telephone or email the examining attorney to expedite processing of this application.

 

/Elizabeth A. Hughitt/

 

Examining Attorney

Law Office 111

U.S. Patent and Trademark Office

571 272 9384

beth.hughitt@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 the Trademark Electronic Application System (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 the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/.  Please keep a copy of the TSDR status screen.  If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or 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/trademarks/teas/correspondence.jsp.