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. 1006193

 

This is a PROVISIONAL FULL REFUSAL of the trademark and/or service mark 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 who represent applicants residing in Canada and who have received reciprocal recognition by the USPTO under 37 C.F.R. §11.14(c).

 

37 C.F.R. §§11.1, 11.14; 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 issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

SEARCH OF OFFICE’S DATABASE OF MARKS

 

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).

 

DISCLAIMER REQUIRED

 

The English translation of non-English wording in the mark that is merely descriptive, deceptively misdescriptive, geographically descriptive, or generic in connection with the identified goods and/or services, is an unregistrable component of the mark.  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).

 

For a disclaimer of non-Latin characters, applicant must disclaim the non-Latin characters with a reference to the English translation (i.e., “the non-Latin characters that mean BRAND”).  TMEP §1213.08(d). 

 

The following disclaimer format is acceptable:

 

No claim is made to the exclusive right to use the non-Latin characters that mean “BRAND” apart from the mark as shown.

 

The term “BRAND” is defined as “product or manufacturer: a name, usually a trademark, of a product or manufacturer, or the product identified by this name.”  Encarta® World English Dictionary [North American Edition] © & (P) 2009 Microsoft Corporation (copy attached).

 

The term “BRAND” merely describes a characteristic of the applicant’s goods, namely, tea that is identified by the trademark.

 

Trademark Act Section 6(a), 15 U.S.C. Section 1056(a), states that the Commissioner may require the applicant to disclaim an unregistrable component of a mark.  Trademark Act Section 2(e), 15 U.S.C. Section 1052(e), bars the registration of a mark which is merely descriptive or deceptively misdescriptive, or primarily geographically descriptive of the goods. Therefore, the Commissioner may require the disclaimer of a portion of a mark which, when used in connection with the goods or services, is merely descriptive or deceptively misdescriptive, or primarily geographically descriptive.  If an applicant does not comply with a disclaimer requirement, the examining attorney may refuse registration of the entire mark.  TMEP section 1213.01(b).

 

A disclaimer does not remove the disclaimed matter from the mark.  It is simply a statement that the applicant does not claim exclusive rights in the disclaimed wording or design apart from the mark as shown in the drawing.

 

The following cases explain the disclaimer requirement more fully:  In re Kraft, Inc., 218 USPQ 571 (TTAB 1983); In re EBS Data Processing, Inc., 212 USPQ 964 (TTAB 1981); In re National Presto Industries, Inc., 197 USPQ 188 (TTAB 1977); In re Pendleton Tool Industries, Inc., 157 USPQ 114 (TTAB 1968).

 

Applicant is encouraged to telephone the assigned trademark examining attorney to resolve the issues raised in this Office action.

 

 

 

 

/Alec Powers/

Trademark Examining Attorney

US Patent and Trademark Office

Law Office 101

Phone: 571-272-9309

Fax: 571-273-9101

 

 

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.