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. 

 

MAILING/E-MAILING DATE INFORMATION:  If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.

 

Serial Number  78/639701

 

               This letter responds to applicant’s communication filed on January 27, 2006. In the response, the applicant presented argument in favor of registration, responded to a general inquiry, provided a transliteration, a translation and provided a disclaimer.  Inasmuch as the transliteration and translation is ambiguous, the transliteration, translation and disclaimer are not made of record at this time.

 

             In the initial office action, application was refused based upon Section 2(d) of the Trademark Act.  Based upon argument presented by the applicant, said refusal is withdrawn.

 

 

 

 

 

AMBIGUITY OF TRANSLITERATION AND TRANSLATION  

 

               It is entirely unclear as to whether the transliteration of the Chinese character is CGLE or CHINA GANODERMA LUCIDUM ESSENCE or (CHINA GANORDERMA LUCIDUM ESSENCE) or CGLE (CHINA GANORDERMA LUCIDUM ESSENCE).  The precise transliteration is required so that the determination as to which, if any portion of the Chinese characters have to be disclaimed. 

 

              Accordingly, applicant must submit a PRECISE transliteration and translation 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 “CHINA GANODERMA LUCIDUM ESSENCE,” and this means “CHINESE REISHI MUSHROOMS ESSENCE” in English.”[1]

TRANSLATION

 

            The applicant must submit an English translation of the wording GANODERMA LUCIDUM.  37 C.F.R. §2.61(b); TMEP §809.

 

GENERAL INQUIRY

 

            The applicant must indicate whether REISHE MUSHROOMS has any significance in the relevant trade, any geographical significance or any meaning in a foreign language.  37 C.F.R. Section 2.61(b).

DISCLAIMER

 

             The applicant must disclaim the descriptive wording, namely, CHINA GANODERMA LUCIDUM ESSENCE in the mark as well as any merely descriptive Chinese characters.  Where the translation of non-English wording in the mark demonstrates that the wording is merely descriptive, deceptively misdescriptive, geographically descriptive, or generic in connection with the identified goods or services, then that wording comprises an unregistrable component of the mark and is subject to a proper disclaimer requirement in the same way that the English version would be subject to a disclaimer.  TMEP §1213.08(d).

 

             In addition, where the disclaimer concerns non-Latin characters, the statement must disclaim either the transliteration of the characters or “the non-Latin characters meaning ‘specify the English meaning of the Chinese characters’” and not simply the English translation of the characters.  TMEP §1213.08(d).  the following format is merely an example of a properly worded disclaimer for the descriptive Chinese characters (for the disclaimer suggested by the examining attorney, please see the disclaimer below which is highlighted in bold)

 

No claim is made to the exclusive right to use the non-Latin characters that mean “(specify the meaning of any and all descriptive characters, e.g. CHINESE REISHI MUSHROOMS ESSENCE ” apart from the mark as shown.

 

 

 

 

            The computerized printing format for the Trademark Official Gazette requires a standard form for a disclaimer.   TMEP §1213.08(a)(i).  A properly worded disclaimer for both the descriptive wording and the descriptive characters should read as follows:

 

No claim is made to the exclusive right to use CHINA GANODERMA LUCIDUM ESSENCE and the non-Latin characters that mean CHINESE REISHI MUSHROOMS ESSENCE apart from the mark as shown.[2]

 

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

 

NOTE:

 

            If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

 

 

 

 

 

 

 

/William H. Dawe III/

Trademark Attorney

Law Office 108

(571) 272-9337 voice

(571) 273-9337 fax

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond using the Office’s Trademark Electronic Application System (TEAS) Response to Office action form available on our website at http://www.gov.uspto.report/teas/index.html.  If the Office action issued via e-mail, you must wait 72 hours after receipt of the Office action to respond via TEAS.  NOTE:  Do not respond by e-mail.  THE USPTO WILL NOT ACCEPT AN E-MAILED RESPONSE.
• 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.  NOTE:  The filing date of the response will be the date of receipt in the Office, not the postmarked date.  To ensure your response is timely, use a certificate of mailing.  37 C.F.R. §2.197.

 

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.