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:

 

 

INTERNATIONAL REGISTRATION NO. 0975823.

 

This is a PROVISIONAL FULL REFUSAL of the trademark in the above-referenced U.S. application.  See 15 U.S.C. §1141h(c).

 

WHO IS PERMITTED TO RESPOND TO THIS PROVISIONAL FULL REFUSAL:

 

Applicant may respond directly to this provisional refusal Office action, or applicant’s attorney may respond on applicant’s behalf.  However, the only attorneys who can practice before the USPTO in trademark matters are as follows:

 

(1)     Attorneys in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and other federal territories and possessions of the United States; and

 

(2)     Canadian agents/attorneys whorepresent applicants residing in Canada and who have received reciprocal recognition by the USPTO under 37 C.F.R. §10.14(c).

 

37 C.F.R. §§10.1(c), 10.14; TMEP §602.

 

Foreign attorneys are not permitted to practice before the USPTO, other than properly authorized Canadian attorneys.  TMEP §602.06(b).  Filing written communications, authorizing an amendment to an application, or submitting legal arguments in response to a requirement or refusal constitutes representation of a party in a trademark matter.  A response signed by an unauthorized foreign attorney is considered an incomplete response.  See TMEP §§602.03, 712.03.

 

THE APPLICATION HAS BEEN PROVISIONALLY REFUSED AS FOLLOWS:

 

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issues below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62, 2.65(a); TMEP §§711, 718.03.

 

 

SEARCH RESULTS

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

 

 

TRANSLITERATION REQUIRED

 

Applicant must submit a transliteration of the non-Latin characters in the mark, with either a translation of the corresponding non-English wording or a statement that the transliterated term has no meaning in a foreign language.  TMEP §809; see 37 C.F.R. §§2.32(a), 2.61(b).  A transliteration is the phonetic spelling, in Latin characters, of the terms in the mark that are in non-Latin characters.

 

The following formats are acceptable for a transliteration statement:

 

The non-Latin characters in the mark transliterate to “________,” and this means “________” in English.

 

The non-Latin characters in the mark transliterate to “________,” and this has no meaning in a foreign language.

 

TMEP §809.02.

 

 

DESCRIPTION OF THE MARK 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 et seq.   

 

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

 

The mark consists of the design of a bottle label represented by six concentric ovals where the wording AUTHENTIC HIMALAYAN BREW is featured in the top of the label and above the design of two crossed swords.  Non-Latin characters meaning ________ [applicant to provide the transliteration] are featured in the middle of the label and above the wording GORKHA.  The wording PREMIUM QUALITY NEPALI BEER appears at the bottom of the label.

 

 

DISCLAIMER REQUIRED

 

Applicant must disclaim “AUTHENTIC HIMALAYAN BREW” “GORKHA” and “PREMIUM QUALITY NEPALI BEER” apart from the mark as shown because it is merely descriptive for a feature and the geographic origin of the goods that applicant will provide.  Trademark Act Section 6, 15 U.S.C. §1056(a); TMEP §§1213 and 1213.03(a). 

 

Here, the wording authentic Himalayan brew and premium quality Nepali beer merely describes a feature of the beer applicant is providing.  Moreover, Gorkha is a town in Nepal.  Please see the attached dictionary definitions.  Applicant is providing beer from Nepal.  As such, the wording “AUTHENTIC HIMALAYAN BREW” “GORKHA” and “PREMIUM QUALITY NEPALI BEER” is merely descriptive for a feature and the geographic origin of the applicant’s goods.

The following is the accepted standard format for a disclaimer:

 

No claim is made to the exclusive right to use “AUTHENTIC HIMALAYAN BREW” “GORKHA” and “PREMIUM QUALITY NEPALI BEER” apart from the mark as shown.

 

The Office can require an applicant to disclaim an unregistrable part of a mark consisting of particular wording, symbols, numbers, design elements or combinations thereof.  15 U.S.C. §1056(a).  Under Trademark Act Section 2(e), the Office can refuse registration of an entire mark if the entire mark is merely descriptive, deceptively misdescriptive, or primarily geographically descriptive of the goods.  15 U.S.C. §1052(e).  Thus, the Office may require an applicant to disclaim a portion of a mark that, when used in connection with the goods or services, is merely descriptive, deceptively misdescriptive, primarily geographically descriptive, or otherwise unregistrable (e.g., generic).  See TMEP §§1213, 1213.03. 

 

Failure to comply with a disclaimer requirement can result in a refusal to register the entire mark.  TMEP §1213.01(b).

 

A “disclaimer” is a statement that applicant does not claim exclusive rights to an unregistrable component of a mark.  TMEP§1213.  A disclaimer does not affect the appearance of the applied-for mark.  See TMEP§1213.10. 

 

 

RESPONSE GUIDELINES

 

To expedite prosecution of this 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.

 

Applicant may wish to hire a trademark attorney to assist in prosecuting this application because of the legal technicalities involved.  The Office, however, cannot aid in the selection of an attorney.  37 C.F.R. §2.11.

 

Please be advised that the only attorneys who can practice before the USPTO in trademark matters are as follows:

 

(1)     Attorneys in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and other federal territories and possessions of the United States; and

 

(2)     Canadian agents/attorneys whorepresent applicants residing in Canada and who have received reciprocal recognition by the USPTO under 37 C.F.R. §10.14(c). 

 

37 C.F.R. §§10.1(c), 10.14; TMEP §602.

 

Foreign attorneys are not permitted to practice before the USPTO, other than properly authorized Canadian attorneys.  TMEP §602.06(b).  Filing written communications, authorizing an amendment to an application, or submitting legal arguments in response to a requirement or refusal constitutes representation of a party in a trademark matter.  A response signed by an unauthorized foreign attorney is considered an incomplete response.  See TMEP §§602.03, 712.03.

 

 

 Charisma Hampton

/Charisma Hampton/

Trademark Examining Attorney

Phone: 571-270-1522

Email: charisma.hampton@uspto.gov

 

 

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.