Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

 

Serial Number  78/604191

 

Duplication of Registration – Refusal

 

The application is refused because registration would result in a duplicate registration.  The Office will not issue two or more identical registrations.  When an application is a duplicate of a registration owned by the applicant, and Office records show that the registration is still active, the examining attorney must refuse registration.  TMEP §703.   The Office records indicates that the applicant is owner of Registration No. 2238760.  See attachment.  Therefore, registration must be refused.

 

Portrait of an Individual

 

Applicant must clarify whether the portrait shown in the mark depicts a particular living individual. 

 

If the portrait shown in the mark depicts a particular living individual, then applicant must submit the following: 

 

(1)   a signed, written consent from that individual, authorizing applicant to register the portrait as a trademark with the USPTO; and

 

(2)   a statement that “the portrait in the mark identifies a living individual whose consent is of record.”

 

However, if the portrait does not depict a living individual, then applicant must submit a statement that “the portrait in the mark does not identify a living individual.”  Trademark Act Section 2(c), 15 U.S.C. §1052(c); TMEP §§813 and 1206.

 

Disclaimer

 

The applicant must disclaim the descriptive wording “FRESHLY ROASTED” apart from the mark as shown. Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a).  The wording is merely descriptive because it describes a feature of the applicant’s coffee.  A properly worded disclaimer should read as follows:

 

No claim is made to the exclusive right to use FRESHLY ROASTED apart from the mark as shown.

 

See In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).

 

 

 

 

 

/Stephanie M. Davis, Esq./

Examining Trademark Attorney

Law Office 103

571.272.9272 (voice)

571.273.9103 (fax)

 

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond formally using the Office’s Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://www.gov.uspto.report/teas/index.html and follow the instructions, but if the Office Action has been issued via email, you must wait 72 hours after receipt of the Office Action to respond via TEAS).
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above and include the serial number, law office number and examining attorney’s name in your response.

 

STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.