UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.

 

ISSUE/MAILING DATE: 3/15/2013

 

 

 

 

The statement of use 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(a), 2.65(a); TMEP §§711, 718.03.

 

Summary of Issues Applicant Must Address

• Sections 1, 2, and 45 Refusal - Ornamentation

 

Section 1, 2, and 45 Refusal – Ornamental

 

Applicant has applied for registration of the mark DEFEND in standard-character form for:

 

Clothing, namely t-shirts, sweaters, shorts, boardshorts, pants, bikinis, shoes, hats, jackets and bandanas, in Class 25.

 

In support of the statement of use, applicant has submitted two specimens described as “Tshirts displaying the Mark.”  Both specimens consist of T-shirts with the applied-for mark imprinted on them.

 

On the first, the term DEFEND appears in large lettering above a design of a skull wearing a hat and additional wording, “ALWAYS ALOHA DON’T MISTAKE ALOHA FOR WEAKNESS” with lines composed of triangles.

 

The second T-shirt shows the word DEFEND beneath of design of three paddles or similar objects.  The term DEFEND shares a similar patterned design with lines on the paddles.

 

As a result, registration is refused because the applied-for mark as used on the specimen of record (1) is merely a decorative or ornamental feature of goods; and (2) does not function as a trademark to identify and distinguish applicant’s goods from those of others and to indicate the source of applicant’s goods.  Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§1051-1052, 1127; see In re Villeroy & Boch S.A.R.L., 5 USPQ2d 1451, 1454 (TTAB 1987) (holding an applied-for mark consisting of a floral pattern design used on tableware to be nondistinctive and merely a decorative pattern with no trademark significance); TMEP §§904.07(b), 1202.03 et seq.

 

When evaluating a mark that appears to be ornamental, “the size, location, dominance and significance of the alleged mark as applied to the goods” are all relevant factors in determining whether it is inherently distinctive.  E.g., In re Pro-Line Corp., 28 USPQ2d 1141, 1142 (TTAB 1993); In re Dimitri’s Inc., 9 USPQ2d 1666, 1667 (TTAB 1988); In re Astro-Gods Inc., 223 USPQ 621, 623 (TTAB 1984); TMEP §1202.03(a).

 

The use of the applied-for mark on the specimen is merely ornamental because the mark appears in relatively large wording and is integrated with the design elements such that consumers would view the mark as part of the overall design of the goods.  In other words, consumers would choose to purchase the applicant’s goods because they like the overall design and message conveyed, and not because they view the term DEFENDS as an indicator of source. 

 

In appropriate circumstances, applicant may overcome this refusal by satisfying one of the following options:

 

(1) Submit a different specimen (a verified “substitute” specimen) that was in actual use in commerce at least as early as the filing date of the application (or prior to the filing of an amendment to allege use; or prior to the expiration of the deadline for filing a statement of use) and that shows proper trademark use for each international class identified in the application, notice of allowance, or allegation of use.

 

(2) Amend to the Supplemental Register, which is a second trademark register for marks not yet eligible for registration on the Principal Register, but which may be capable over time of functioning as source indicators. 

 

(3) Claim acquired distinctiveness under Trademark Act Section 2(f) by submitting evidence that the applied-for mark has become distinctive of applicant’s goods; that is, proof that applicant’s extensive use and promotion of the mark has allowed consumers now directly to associate the mark with applicant as the source of the goods.

 

(4) Submit evidence that the applied-for mark is an indicator of secondary source; that is, proof that the mark is already recognized as a source indicator for other goods or services that applicant sells/offers.    

 

For an overview of all the response options referenced above and instructions on how to satisfy each option online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/ornamental.jsp.

 

ADVISORY – Insurance Extension

 

A statement of use cannot be withdrawn.  37 C.F.R. §2.88(g); In re Informix Software, Inc., 32 USPQ2d 1861 (Comm’r Pats. 1993); TMEP §§1109.02, 1109.17.  However, on or after the date of filing a statement of use, an applicant may file one final request for an extension of time to file a statement of use (an “insurance” extension request) if (1) there is time remaining in the six-month period in which the statement of use was filed, and (2) granting the extension request would not extend the time for filing a statement of use more than thirty-six months from the date of issuance of the notice of allowance.  37 C.F.R. §2.89(e)(1); TMEP §1108.03. 

 

An insurance extension request, if granted, would allow an applicant additional time to cure deficiencies with the already-filed statement of use that must be corrected before the expiration of the deadline for filing a statement of use.  See TMEP §§1108.03.  Such deficiencies include providing a proper specimen showing valid use in commerce before expiration of the time for filing the statement of use.  See 1109.16(a).  However, a granted insurance extension request does not permit an applicant to file another statement of use or further extension requests.  See TMEP §§1108.03, 1109.17. 

 

Should applicant file a timely “insurance” extension request, applicant would have until February 12, 2014, or 12 months from the date of issuance of the notice of allowance, to cure any deficiencies with the statement of use.

 

If applicant files such an extension request, the response deadline to this Office action will remain unchanged.  TMEP §1109.16(d).  A proper response must be received by the Office within six months from the date of issuance of this Office action to avoid abandonment of the application.  15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §1109.16(d).

 

Response Guidelines

 

To expedite prosecution of the 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/trademarks/teas/index.jsp.  If applicant has technical questions about the TEAS response to Office action form, applicant can review the electronic filing tips available online at http://www.gov.uspto.report/trademarks/teas/e_filing_tips.jsp and email technical questions to TEAS@uspto.gov.

 

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §2.191; TMEP §§304.01-.02, 709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

 

 

 

/Kim Teresa Moninghoff/

Examining Attorney

Law Office 113

Phone: 571-272-4738

Fax: 571-273-9113

Email: kim.moninghoff@uspto.gov

 

TO RESPOND TO THIS LETTER:  Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application.  For technical assistance with online forms, e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned trademark examining attorney.  E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

 

All informal e-mail communications relevant to this application will be placed in the official application record.

 

WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants).  If an applicant is represented by an attorney, the attorney must sign the response. 

 

PERIODICALLY CHECK THE STATUS OF THE APPLICATION:  To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/.  Please keep a copy of the TSDR status screen.  If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199.  For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

 

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.

 

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 3/15/2013 FOR U.S. APPLICATION SERIAL NO. 85677974

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 3/15/2013 (or sooner if specified in the Office action).  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System (TEAS) response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.