Offc Action Outgoing

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: 12/1/2009

 

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.

 

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

 

Disclaimer

 

The applicant must disclaim the descriptive word “CERVEZA ESPECIAL” apart from the mark as shown. See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a).  The wording merely describes the nature of the applicant’s goods.  “CERVEZA ESPECIAL” translates to “special beer”.  “Beer” is generic and “special” describes a type of beer, i.e. seasonal or limited issue.  See attached.

 

In further support of this requirement, the examining attorney attaches third-party registrations obtained from the USPTO X-Search database.  The registrations all have disclaimers of the descriptive term, “CERVEZA ESPECIAL”, for similar goods.

 

The English translation of non-English wording that is descriptive, deceptively misdescriptive, geographically descriptive, or generic in connection with the identified goods and/or services, is an unregistrable component of the mark.  TMEP §1213.08(d); see Bausch & Lomb Optical Co. v. Overseas Fin. & Trading Co., 112 USPQ 6, 8 (Comm’r Pats. 1956).  Therefore, it is subject to a proper disclaimer requirement in the same way that the English version of such wording would be subject to a disclaimer.  See TMEP §§1213.03(a), 1213.08(d).

 

The format for the disclaimer statement must refer to the actual non-English wording that appears in the mark, not the English translation of that wording.  TMEP §1213.08(d).  A properly worded disclaimer would thus read as follows:

 

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

 

See TMEP §1213.08(a)(i).

 

Translation Required

 

Applicant must submit an English translation of all foreign wording in the mark.  37 C.F.R. §2.32(a)(9); see TMEP §809.  In the present case, the wording “CERVEZA ESPECIAL” and “NOCHE BUENA” requires translation.  See attached.

 

The following translation statement is suggested:  “The English translation of “CERVEZA ESPECIAL” is “special beer” and “NOCHE BUENA” is “good night”.”  TMEP §809.03.

 

Ownership of Prior Registrations

 

If applicant is the owner of U.S. Registration Nos. 1061913 and 1031645 (see attached), then applicant must submit a claim of ownership.  See 37 C.F.R. §2.36; TMEP §812.  The following standard format is suggested:

 

Applicant is the owner of U.S. Registration Nos. 1061913 and 1031645.

 

Drawing Clarification

 

If the square outlining the design portion of the mark is not apart of the mark, applicant should submit a new drawing omitting this portion.

 

If applicant submits a new drawing in the form of a digitized image, it must be in jpg format.  The Office recommends that the digitized image have 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).

 

Amendments or changes to the applied-for mark in a substitute drawing will not be accepted if the changes would materially alter the mark.  37 C.F.R. §2.72; see TMEP §§807.13 et seq., 807.14.

 

General Response Guidelines

 

There is no required format or form for responding to an Office action.  The Office recommends applicants use the Trademark Electronic Application System (TEAS) to respond to Office actions online at http://www.gov.uspto.report/teas/index.html. 

 

If applicant responds on paper via regular mail, the response should include the title “Response to Office Action” and the following information:  (1) the name and law office number of the examining attorney, (2) the serial number and filing date of the application, (3) the date of issuance of this Office action, (4) applicant’s name, address, telephone number and e-mail address (if applicable), and (5) the mark.  37 C.F.R. §2.194(b)(1); TMEP §302.03(a).

 

Applicant must explicitly address each issue raised in this Office action.  If a refusal has issued, applicant may wish to argue against the refusal, i.e., submit arguments and/or evidence as to why the refusal should be withdrawn.  To respond to requirements, applicant should set forth in writing the required changes or statements. 

 

The response must be signed by the individual applicant or by a person with legal authority to bind a juristic applicant (e.g., a corporate officer, the equivalent of an officer for unincorporated organizations or limited liability companies, a general partner).  See TMEP §§611.03(b), 611.06 et seq., 712.01.  In the case of joint applicants, all should sign.  TMEP §611.06(a).  The proper signatory must personally sign or manually enter his/her electronic signature.  TMEP §§611.01(b), 611.02.

 

Applicant should include the following information on all correspondence with the Office:  (1) the name and law office number of the trademark examining attorney, (2) the serial number and filing date of the application, (3) the date of issuance of this Office action, (4) applicant’s name, address, telephone number and e-mail address (if applicable), and (5) the mark.  37 C.F.R. §2.194(b)(1); TMEP §302.03(a).

 

Applicant should provide a current telephone number with its response to expedite processing.  TMEP §302.03(a).

 

To expedite prosecution of the application, applicant is encouraged to file its response to this Office action online via the Trademark Electronic Application System (TEAS), which is available at http://www.gov.uspto.report/teas/index.html.  If applicant has technical questions about the TEAS response to Office action form, applicant can review the electronic filing tips available online at http://www.gov.uspto.report/teas/eFilingTips.htm and email technical questions to TEAS@uspto.gov.

 

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.

 

 

 

/Kevin M. Dinallo/

Trademark Examining Attorney

United States Patent & Trademark Office

Law Office 107

571-272-9731

 

 

 

RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the form at http://www.gov.uspto.report/teas/eTEASpageD.htm, waiting 48-72 hours if applicant received notification of the Office action via e-mail.  For technical assistance with the form, please e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned examining attorney.  Do not respond to this Office action by e-mail; 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 REGARDING YOUR TRADEMARK APPLICATION

 

Your trademark application (Serial No. 77807262) has been reviewed.   The examining attorney assigned by the United States Patent and Trademark Office (“USPTO”) has written a letter (an “Office action”) on 12/1/2009 to which you must respond (unless the Office letter specifically states that no response is required).  Please follow these steps:

 

1. Read the Office letter by clicking on this link http://tmportal.gov.uspto.report/external/portal/tow?DDA=Y&serial_number=77807262&doc_type=OOA&mail_date=20091201 OR go to  http://tmportal.gov.uspto.report/external/portal/tow and enter your serial number to access the Office letter.  If you have difficulty accessing the Office letter, contact TDR@uspto.gov.  

                                         

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

 

2. Contact the examining attorney who reviewed your application if you have any questions about the content of the Office letter (contact information appears at the end thereof).

 

3. Respond within 6 months, calculated from 12/1/2009 (or sooner if specified in the Office letter), using the Trademark Electronic Application System (TEAS) Response to Office Action form. If you have difficulty using TEAS, contact TEAS@uspto.gov. 

 

ALERT:

 

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

 

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.