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.

 

SUMMARY OF ISSUES:

 

• New Drawing Required
• Standard Character Claim in Application & Distinctive Elements in Drawing
• Identification and Classification of Services
• Multiple-Class Application Requirements – Advisory
• Disclaimer Required
• Mark Description Required

 

SEARCH RESULTS

 

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).

 

NEW DRAWING REQUIRED

 

The drawing is not acceptable because it will not create a high quality image when reproduced.  See TMEP §807.04(a).  Specifically, the drawing shows significant blurring.

 

A clear drawing of the mark is an application requirement.  37 C.F.R. §2.52.  Therefore, applicant must submit a new drawing showing a clear depiction of the mark.  All lines must be clean, sharp and solid, and not fine or crowded.  37 C.F.R. §§2.53(c), 2.54(e); TMEP §§807.05(c), 807.06(a).

 

To submit a new drawing via the Trademark Electronic Application System (TEAS), applicant must use the response form and follow the instructions regarding submission of a drawing.  TMEP §807.05(a); see 37 C.F.R. §2.53(a).  An applicant must submit a drawing via TEAS in jpg format, and the USPTO recommends a digitized image with a length and width no smaller than 250 pixels and no larger than 944 pixels.  37 C.F.R. §2.53(c); TMEP §807.05(c).

 

For drawings submitted on paper, the paper should be approximately 8.5 inches wide by 11 inches long, white, non-shiny, and include the caption “DRAWING PAGE” at the top.  37 C.F.R. §2.54(a)-(c); TMEP §807.06(a).  The mark in the drawing must appear no larger than 3.15 inches (8 cm) high by 3.15 inches (8 cm) wide.  37 C.F.R. §2.54(b); TMEP §807.06(a).  Further, the drawing must be made with ink or by a process that will provide a high definition when scanned.  37 C.F.R. §2.54(e); TMEP §807.06(a).  A photolithographic, printer’s proof copy, or other high-quality reproduction of the mark may be used.  37 C.F.R. §2.54(e); TMEP §807.06(a). 

 

The USPTO will not accept amendments or changes to the applied-for mark shown in a new drawing if the changes would materially alter the mark.  37 C.F.R. §2.72; see TMEP §§807.13 et seq., 807.14.

 

STANDARD CHARACTER CLAIM & DISTINCTIVE ELEMENTS IN DRAWING

 

The drawing of the mark includes a design element; however, the application also includes a standard character claim.  A standard character drawing must show the 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).

 

Therefore, applicant must delete the standard character claim from the application.  See TMEP §807.03(c).  The drawing of the mark will be processed as a special form drawing pursuant to 37 C.F.R. §2.52(b).  Id. 

 

IDENTIFICATION AND CLASSIFICATION OF SERVICES

 

The identification of services is indefinite where indicated and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must specify the common commercial or generic name for the services.  If the services have no common commercial or generic name, applicant must describe the nature of the services as well as their main purpose, channels of trade, and the intended consumer(s). In addition, “health care services” is misclassified in Class 35, and belongs in Class 44.

 

Applicant may adopt the following Class 35 identification, if accurate: 

 

Association services in the nature of a coalition of health services providers, namely, promoting the interests of health services providers; public advocacy services to promote healthcare awareness

 

Applicant may add and adopt the following Class 44 identification, if accurate:

 

Healthcare services

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS – ADVISORY

 

The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(1)       List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.

 

(2)       Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp).  The application identifies goods and/or services that are classified in at least 2 classes; however, applicant submitted a fee(s) sufficient for only 1 class(es).  Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

For an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/multiclass.jsp.

 

DISCLAIMER REQUIRED

 

Applicant must disclaim the wording “NORTH TEXAS” because it is primarily geographically descriptive of the origin of applicant’s goods and/or services, and thus is an unregistrable component of the mark.  See 15 U.S.C. §§1052(e)(2), 1056(a); In re Societe Generale des Eaux Minerales de Vittel S.A., 824 F.2d 957, 959, 3 USPQ2d 1450, 1451-52 (Fed. Cir. 1987); In re Joint-Stock Co. “Baik”, 80 USPQ2d 1305, 1309 (TTAB 2006); TMEP §§1210.01(a), 1210.06(a), 1213.03(a).

 

The attached evidence from Wikipedia shows that Texas, generally, and North Texas, specifically are generally known geographic places or locations (eight references to “North Texas” in the Wikipedia entry).  See TMEP §§1210.02 et seq.; http://en.wikipedia.org/wiki/Texas. Articles from the online Wikipedia® encyclopedia may be used to support a refusal or requirement, provided that an applicant has an opportunity to rebut such evidence.  See In re IP Carrier Consulting Grp., 84 USPQ2d 1028, 1032 (TTAB 2007); TBMP §1208.03; TMEP §710.01(b).

 

The services for which applicant seeks registration originate in this geographic place or location as shown by applicant’s address.  See TMEP §1210.03.  Last, purchasers are likely to presume the services originate in this geographic place or location because of applicant’s location.  See TMEP §§1210.04 et seq. 

 

An applicant may not claim exclusive rights to terms that others may need to use to describe their goods and/or services, including the geographic origin thereof, 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 “NORTH TEXAS” 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.

 

MARK DESCRIPTION REQUIRED

 

The applied-for mark is not in standard characters and applicant did not provide a description of the mark with the initial application.  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 §§808.01, 808.02, 808.03(b). 

 

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

 

The mark consists of six stick figures representing people to the left of the wording “NORTH TEXAS” above the wording “HEALTHY COMMUNITIES”.

 

RESPONSE GUIDELINES

 

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.

 

 

 

 

/Cynthia Y. Rinaldi/

Examining Attorney

Law Office 107

cynthia.rinaldi@uspto.gov

571-272-4685

 

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.