UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

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

 

 

 

PRIORITY 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:

 

 

 

DATABASE SEARCH:  The trademark examining attorney has searched the USPTO’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).

 

ISSUES APPLICANT MUST ADDRESS:  On June 27, 2016, the trademark examining attorney and M. Caruso discussed the issues below.  Applicant must timely respond to these issues.  See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §§708, 711.

 

SUMMARY OF ISSUES:

 

• Refusal of Registration:  Section 2(e)(1)
• Classification of Services

 

REFUSAL OF REGISTRATION UNDER SECTION 2(E)(1)

 

Registration is refused because the applied-for mark merely describes a feature of applicant’s goods and/or services.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.

 

A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s goods and/or services.  TMEP §1209.01(b); see, e.g., In re TriVita, Inc., 783 F.3d 872, 874, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005) (citing Estate of P.D. Beckwith, Inc. v. Comm’r of Patents, 252 U.S. 538, 543 (1920)). Applicant owns four registrations that include the phrase “HOT N READY”, namely, 4675549, 3925216, 3030991, and 2716691.  Reg. Nos. 4675549, 3925216, and 3030991 are registered under Section 2(f) as to the “HOT N READY” portions of the marks and Reg. No. 2716691 is registered on the Supplemental Register.  See attached registrations.

 

Applicant’s mark, HOT-N-READY DELIVERY, is the phonetic equivalent of HOT AND READY.  Applicant disclaimed DELIVERY in the application.  The phrase HOT AND READY is used to describe food that is hot and ready to eat when delivered.  The attached Internet excerpts show use of the phrase “HOT AND READY” in connection with food.

 

Applicant’s mark is HOT-N-READY DELIVERY where DELIVERY was disclaimed in the application.  Consumers will readily and easily understand that applicant delivers HOT-N-READY food.

 

Section 2(f)

 

Applicant may seek registration on the Principal Register under Trademark Act Section 2(f) by claiming acquired distinctiveness through ownership of active U.S. Registration No(s). 4675549, 3925216, and 3030991.  See 15 U.S.C. §1052(f); TMEP §§1212.04 et seq.  To do so, applicant must submit the following statement, if accurate:

 

The mark has become distinctive of the goods and/or services as evidenced by the ownership of active U.S. Registration No(s). 4675549, 3925216, and 3030991 on the Principal Register for the same mark for sufficiently similar goods and/or services.

 

TMEP §1212.04(e); see 37 C.F.R. §2.41(a)(1). 

 

RESPONSE

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.  However, if applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.

 

Classification of Services

 

The services in the application are:  Delivery of food and beverages by restaurants.

 

The services are classified incorrectly.  Applicant must amend the application to classify the services in International Class 39.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b).

 

Attached is an excerpt for “delivery of food by restaurants” from the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual showing that the services are in class 39.  See TMEP §1402.04.  The note that accompanies the entry says “These services are classified in Class 39 because “Delivery of food” is listed first as the primary service. The means by which the goods are delivered is secondary in this case.”

 

 

 

/Kim Saito/

Examining Attorney Law Office 102

kim.saito@uspto.gov

571.272.9214

 

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.