UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.

 

ISSUE/MAILING DATE: 3/30/2008

 

 

The assigned trademark examining attorney has reviewed the referenced application and has determined the following:

 

NO CONFLICTING MARK NOTED

 

The Office records have been searched and no similar registered or pending mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02.

 

SECTIONS 1, 2 AND 45 REFUSAL – FALSE CONNECTION

 

Registration is refused because the proposed mark consists of or comprises matter which may falsely suggest a connection with Yasukuni Shrine.  Although not connected with the goods applicant provides under the proposed mark, Yasukuni Shrine is so famous that consumers would presume a connection.  Trademark Act Section 2(a), 15 U.S.C. §1052(a); TMEP §§1203.03, 1203.03(e) and 1203.03(f); See generally University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983); In re Nuclear Research Corp., 16 USPQ2d 1316 (TTAB 1990); University of Alabama v. BAMA-Werke Curt Baumann, 231 USPQ 408 (TTAB 1986); In re Cotter & Co., 228 USPQ 202 (TTAB 1985); Buffett v. Chi-Chi’s, Inc., 226 USPQ 428 (TTAB 1985).

 

The following is required for a showing of false connection under Section 2(a):

 

·        the mark sought to be registered is the same as or a close approximation of the name or identity of a person or institution;

·        the mark would be recognized as such;

·        the person or institution identified in the mark is not connected with the goods sold or services performed by applicant under the mark; and

·        the fame or reputation of the named person or institution is of such a nature that a connection with such person or institution would be presumed when applicant’s mark is used on its goods or services.

 

In re Nuclear Research Corp., 16 USPQ2d 1316 (TTAB 1990); In re Cotter & Co., 228 USPQ 202, 204 (TTAB 1985); Buffett v. Chi‑Chi’s, Inc., 226 USPQ 428, 429 (TTAB 1985).

 

Yasukuni Shrine refers to a Shinto shrine located in Tokyo, Japan, that is dedicated to Japan’s war dead.  See Exhibits 1-5 from the following web sites:

 

http://www.yasukuni.or.jp/english/

http://www.japan-guide.com/e/e2321.html

http://www.frommers.com/destinations/tokyo/A23464.html

http://edition.cnn.com/2001/WORLD/asiapcf/east/08/13/japan.shrine/

http://www.japanvisitor.com/index.php?cID=406&pID=1356

 

It does not appear that this institution is connection with the goods sold by applicant under its mark.  However, because Yasukuni Shrine is so well-known, a connection would be presumed when applicant’s mark is used on its goods.

 

Although the trademark examining attorney has refused registration, applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.  If applicant chooses to respond to the refusal to register, then applicant must also respond to the following requirements.

 

CONDITIONAL REFUSAL – SUPPLEMENTAL REGISTER NOT NECESSARY

 

Applicant has applied for registration of its mark on the Supplemental Register.  However, applicant’s mark is eligible for registration on the Principal Register.  A mark that is clearly eligible for the Principal Register may not be registered on the Supplemental Register.  Daggett & Ramsdell, Inc. v. I. Posner, Inc., 115 USPQ 96 (Comm’r Pats. 1957); TMEP §815.01.  Applicant must amend the application to the Principal Register. 

 

Pending a proper response, registration on the Supplemental Register is refused because the mark is eligible for registration on the Principal Register.  15 U.S.C. §1091(a).

 

IDENTIFICATION OF GOODS/CLASSIFICATION

 

The identification of goods must be clarified because it is too broad and could include goods in other international classes.  TMEP §§1402.01 and 1402.03.  Applicant may adopt the following identification of goods, if accurate: 

 

Toilet seats, in International Class 11.

 

Toilet paper; garbage bags, in International Class 16.

 

Stools, in International Class 20.

 

Garbage cans, in International Class 21.

 

For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.

 

Please note that, while the identification of goods may be amended to clarify or limit the goods, adding to the goods or broadening the scope of the goods is not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, applicant may not amend the identification to include goods that are not within the scope of the goods set forth in the present identification.

 

REQUIREMENTS FOR MULTIPLE-CLASS APPLICATIONS

 

If applicant prosecutes this application as a combined, or multiple-class application, applicant must comply with each of the following for those goods based on a foreign registration under Trademark Act Section 44(e):

 

(1)   Applicant must list the goods by international class with the classes listed in ascending numerical order; and

 

(2)   Applicant must submit a filing fee for each international class of goods not covered by the fee already paid (current fee information should be confirmed at http://www.uspto.gov). 

 

37 C.F.R. §2.86(a)(2); TMEP §§810 and 1403.01.

 

TRANSLITERATION/TRANSLATION OF FOREIGN WORDING NEEDED

 

Applicant must submit a translation and transliteration of the non-Latin characters in the mark.  37 C.F.R. §2.61(b); TMEP §809.  A transliteration is the phonetic spelling, in Latin characters, of the terms in the mark that are in non-Latin characters.  The following format is suggested:  “The non-Latin characters in the mark transliterate to YASUKUNI JINJA, and this means YASUKUNI SHRINE in English.”

 

CERTIFICATE OF REGISTRATION REQUIRED

 

Applicant asserts Trademark Act Section 44(d) as the sole basis for the application.  See 15 U.S.C. §1126(d).  However, the application does not include a foreign registration certificate or a statement indicating whether applicant intends to rely upon the resulting foreign registration under Section 44(e) as a basis for registration.  

 

The Office presumes that an applicant is asserting Section 44(e) as a basis for registration when Section 44(d) is the sole basis in the application, as in the present case.  TMEP §§806.01(c), 1003.03. 

 

An application filed under Section 44(e) must include a true copy, photocopy, certification or certified copy of a foreign registration from an applicant’s country of origin.  15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016.  In addition, the applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law.  15 U.S.C. §1126(b); id. §§1002.01, 1004. 

 

Therefore, applicant must submit a copy of the foreign registration from applicant’s country of origin.  If the foreign certificate of registration is not written in English, applicant must also provide an English translation.  37 C.F.R. §2.34(a)(3)(ii).  The translation should be signed by the translator.  TMEP §1004.01(b).

 

A copy of foreign registration must consist of a document issued to an applicant by or certified by the intellectual property office in the applicant’s country of origin.  TMEP §1004.01.  If an applicant’s country of origin does not issue registrations or certificates of extension of protection, the applicant may submit a copy of the international registration that shows that protection of the international registration has been extended to the applicant’s country of origin.  TMEP §1016.

 

APPLICANT MAY WISH TO SEEK TRADEMARK COUNSEL

 

Applicant may wish to hire a specialist attorney to assist in prosecuting this application because of the technicalities involved.  The Office cannot aid in the selection of a trademark attorney.  37 C.F.R. §2.11.  Applicant may wish to consult the Yellow Pages for a listing of attorneys specializing in trademark or intellectual property law, or seek guidance from its local Bar Association attorney-referral service.

 

If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at the number below.

 

 

/Maria-Victoria Suarez/

Trademark Attorney

Law Office 102

571-272-9264

maria-victoria.suarez@uspto.gov

 

 

RESPOND TO THIS ACTION: If there are any questions about the Office action, please contact the assigned examining attorney. A response to this Office action should be filed using the form available at http://www.gov.uspto.report/teas/eTEASpageD.htm. If notification of this Office action was received via e-mail, no response using this form may be filed for 72 hours after receipt of the notification. Do not attempt to respond by e-mail as the USPTO does not accept e-mailed responses.

 

If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response.  Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.

 

STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov.  When conducting an online status check, print and maintain a copy of the complete TARR screen.  If the status of your application has not changed for more than six months, please contact the assigned examining attorney.

 

 

 

 

 

                                                                

IMPORTANT NOTICE

USPTO OFFICE ACTION HAS ISSUED ON 3/30/2008 FOR

APPLICATION SERIAL NO. 77396689

 

Please follow the instructions below to continue the prosecution of your application:

  

VIEW OFFICE ACTION: Click on this link http://tmportal.gov.uspto.report/external/portal/tow?DDA=Y&serial_number=77396689&doc_type=OOA&mail_date=20080330 (or copy and paste this URL into the address field of your browser), or visit http://tmportal.gov.uspto.report/external/portal/tow and enter the application serial number to access the Office action.

 

PLEASE NOTE: The Office action may not be immediately available but will be viewable within 24 hours of this notification.

 

RESPONSE MAY BE REQUIRED: You should carefully review the Office action to determine (1) if a response is required; (2) how to respond; and (3) the applicable response time period. Your response deadline will be calculated from 3/30/2008.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise attempt to e-mail your response, as the USPTO does NOT accept e-mailed responses.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System response form at http://www.gov.uspto.report/teas/eTEASpageD.htm.

 

HELP: For technical assistance in accessing the Office action, please e-mail

TDR@uspto.gov.  Please contact the assigned examining attorney with questions about the Office action. 

 

        WARNING

1. The USPTO will NOT send a separate e-mail with the Office action attached.

 

2. Failure to file any required response by the applicable deadline will result in the ABANDONMENT of your application.