Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

NONFINAL OFFICE ACTION

 

International Registration No. 1480574

 

Notice of Provisional Full Refusal

 

Deadline for responding.  The USPTO must receive applicant’s response within six months of the “date on which the notification was sent to WIPO (mailing date)” located on the WIPO cover letter, or the U.S. application will be abandoned.  To confirm the mailing date, go to the USPTO’s Trademark Status and Document Retrieval (TSDR) database, select “US Serial, Registration, or Reference No.,” enter the U.S. application serial number in the blank text box, and click on “Documents.”  The mailing date used to calculate the response deadline is the “Create/Mail Date” of the “IB-1rst Refusal Note.” 

 

Respond to this Office action using the USPTO’s Trademark Electronic Application System (TEAS).  A link to the appropriate TEAS response form appears at the end of this Office action.

 

Discussion of provisional full refusal.  This is a provisional full refusal of the request for extension of protection to the United States of the international registration, known in the United States as a U.S. application based on Trademark Act Section 66(a).  See 15 U.S.C. §§1141f(a), 1141h(c). 

 

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.

 

Summary of Issues that Applicant Must Address

1. Description of the mark requirement
2. Disclaimer of descriptive wording requirement
3. Requirement for a definite identification of goods

 

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).

 

Description of the Mark

Applicant must submit an amended description of the mark because the current one uses broad, vague language that does not accurately describe the mark.  37 C.F.R. §2.37; see TMEP §§808.01, 808.02.  Descriptions must be accurate and identify all the literal and design elements in the mark.  See 37 C.F.R. §2.37; TMEP §808.02.  In this case, the description is vague because it fails to identify what is meant by its business name appearing in the mark, as well as, the placement of designs and wording. 

 

The following description is suggested, if accurate:  The mark consists of a design of overlapping triangles above the stylized wording KINGSWAY and three non-Latin characters.

 

Disclaimer Requirement

Applicant must provide a disclaimer of the unregistrable part(s) of the applied-for mark even though the mark as a whole appears to be registrable.  See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a).  A disclaimer of an unregistrable part of a mark will not affect the mark’s appearance.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965).

 

Non-English wording that is merely descriptive, deceptively misdescriptive, geographically descriptive, generic, or informational in connection with the identified goods and/or services, is an unregistrable component of a mark that is subject to disclaimer.  TMEP §§1213.03(a), 1213.08(d); see Bausch & Lomb Optical Co. v. Overseas Fin. & Trading Co., 112 USPQ 6, 8 (Comm'r Pats. 1956).  The disclaimer must refer to the non-Latin characters and the transliteration (a phonetic spelling of the pronunciation, in Latin characters); e.g., “the non-Latin characters that transliterate to ‘jin and hui’”.  TMEP §1213.08(d).

 

In this case, applicant must disclaim the aforementioned transliteration, as the wording means “gold” and “collection”, which is not inherently distinctive.  These unregistrable term(s) at best are merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services.  See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a). 

 

Gold refers to a color and composition, which would describe the color of the goods.  See attached evidence of similar goods in the color gold.  Further, collection merely indicates a group of items.  Thus, the wording merely describes applicant’s goods and/or services because it identifies a characteristic and feature of the goods.

 

Applicant may respond to this issue by submitting a disclaimer in the following format: 

 

No claim is made to the exclusive right to use the non-Latin characters that transliterate to “JIN” and “HUI” apart from the mark as shown.       

 

For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage. 

 

Identification of Goods

The current wording used to describe the goods and/or services needs clarification because it is indefinite and unclear as to the nature of applicant’s goods and/or services, as indicated below in the suggested identification of goods and services. Applicant must amend the identification of goods and/or services to specify the common commercial or generic name for the goods and/or services, as appropriate and as indicated below in the suggested identification of goods and services. If there is no common commercial or generic name for the product or service, then applicant must describe the product or service and intended consumer as well as its main purpose and intended uses. TMEP §1402.01. Moreover, the identification of goods and/or services must be specific and all-inclusive. The examining attorney has indicated below using “{ }” where the applicant must be specific. In many instances, applicant should amend the identification to incorporate the wording "namely."

 

Applicant may adopt the following identification of goods and/or services, if accurate: 

 

IC 022: Textile filaments.

 

IC 023: Yarn; rayon thread and yarn; darning thread and yarn; artificial silk, namely, {specify, e.g., rayon thread and yarn}; stretch yarn for textile use; polyethylene monofilament for textile use being yarn; thread.

 

TMEP §1402.01.

 

For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

Further, in a Trademark Act Section 66(a) application, classification of goods and/or services may not be changed from that assigned by the International Bureau of the World Intellectual Property Organization.  37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b).  Additionally, classes may not be added or goods and/or services transferred from one class to another in a multiple-class Section 66(a) application.  37 C.F.R. §2.85(d); TMEP §1401.03(d). 

 

Responses

If applicant has questions about its application or needs assistance in responding to this Office action, please email the assigned trademark examining attorney directly at the address below.

 

Applicant must be represented by a U.S.-licensed attorney at the USPTO to respond to or appeal the provisional refusal.  The application record indicates that applicant’s domicile is outside of the United States in China, but no attorney who is an active member in good standing of the bar of the highest court of a U.S. State or territory has been appointed to represent the applicant in this matter.  All applicants whose permanent legal residence or principal place of business is not within the United States or its territories must be represented by a U.S.-licensed attorney at the USPTO.  37 C.F.R. §§2.2(o), 2.11(a).  Thus, applicant is required to be represented by a U.S.-licensed attorney and must appoint one.  37 C.F.R. §2.11(a).  This application will not proceed to registration without such representation.  See id.  See Hiring a U.S.-licensed trademark attorney for more information.

 

To appoint or designate a U.S.-licensed attorney.  To appoint an attorney, applicant should (1) submit a completed Trademark Electronic Application System (TEAS) Revocation, Appointment, and/or Change of Address of Attorney/Domestic Representative form and (2) promptly notify the trademark examining attorney that this TEAS form was submitted.  Alternatively, if applicant has already retained an attorney, the attorney can respond to this Office action by using the appropriate TEAS response form and provide his or her attorney information in the form and sign it as applicant’s attorney.  See 37 C.F.R. §2.17(b)(1)(ii).

 

How to respond.  Click to file a response to this nonfinal Office action  

 

 

 

/Bernice Middleton/

Bernice Middleton

Trademark Examining Attorney

Law Office 106

Bernice.Middleton@uspto.gov

(571) 270.1514

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.

 

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.