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: 7/27/2014

 

 

This Office action is in response to applicant’s communication filed on July 9, 2014.

 

The applicant’s amended Class 007 identification of goods has been entered.

 

However, the applicant must respond to the following requirements:

 

Disclaimer – Amended Disclaimer Statement Required – Descriptive and Geographically Descriptive

 

In its response filed on January 22, 2014, applicant submitted a disclaimer statement regarding the wording “PREMIUM FILTERS” which is accepted and entered.  However, on December 13, 2013, the applicant filed an assignment of the mark with this Office from original owner, Baldwin Filters, Inc., to new owner, Hastings Manufacturing Company, who is located in Hastings, Michigan.

 

Based on this assignment and new information of record, the applicant must disclaim the following unregistrable components of the mark:  (1) the wording “PREMIUM FILTERS” because it merely describes an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods; and (2) the wording “HASTINGS” because it is primarily geographically descriptive of the origin of applicant’s goods.  See 15 U.S.C. §§1052(e)(1)-(2), 1056(a); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Societe Generale des Eaux Minerales de Vittel S.A., 824 F.2d 957, 959, 3 USPQ2d 1450, 1451-52 (Fed. Cir. 1987); TMEP §§1210.01(a), 1210.06(a), 1213.03(a). 

 

For the reasons set forth in the July 23, 2014 Office action, the wording PREMIUM FILTERS is merely descriptive of the goods and must be disclaimed.

 

The attached evidence from Wikipedia shows that HASTINGS is a generally known geographic place or location.  See TMEP §§1210.02 et seq.  The goods for which applicant seeks registration originate in this geographic place or location as shown by applicant’s/assignee’s address (assignee Hastings Manufacturing Company is located in Hastings, Michigan).  See TMEP §1210.03.  Purchasers are likely to believe the goods originate in this geographic place or location because there is no genuine issue that the geographical significance of the term HASTINGS is its primary significance, this geographical place is neither obscure nor remote, and the applicant’s goods do originate in the place named in the mark.  See TMEP §§1210.04 et seq.  

 

If the most prominent meaning or significance of a mark is geographic for the goods and/or services in the application, the fact that the mark may have other meanings in other contexts does not alter its geographic significance in the context of the application.  See In re Opryland USA Inc., 1 USPQ2d 1409, 1412-13 (TTAB 1986) (holding the mark THE NASHVILLE NETWORK primarily geographically descriptive of television program production and distribution services when finding that the primary significance of the term referred to Nashville, Tennessee and not that of a style of music); In re Cookie Kitchen, Inc., 228 USPQ 873, 874 (TTAB 1986) (noting that where MANHATTAN refers to a type of cocktail and to a geographic location that having an alternative meaning does not alter the mark’s primary geographic significance in the context of the goods in the application); In re Jack’s Hi-Grade Foods, Inc., 226 USPQ 1028, 1029 (TTAB 1985) (noting that where NEAPOLITAN refers to a type of ice cream and also means “pertaining to Naples, Italy” that having an alternative meaning does not alter the mark’s primary geographic significance in the context of the goods in the application); TMEP §1210.02(b)(i).  In this case, in the context of the applicant’s goods, the most prominent or significant meaning of the word HASTINGS is that it refers to the city of Hastings, Michigan where applicant is now located.

 

An applicant may not claim exclusive rights to terms that others may need to use to describe their goods and/or services, including the geographic origin thereof, in the marketplace.  See Dena Corp. v. Belvedere Int’l, Inc., 950 F.2d 1555, 1560, 21 USPQ2d 1047, 1051 (Fed. Cir. 1991); In re Aug. Storck KG, 218 USPQ 823, 825 (TTAB 1983).  A disclaimer of unregistrable matter does not affect the appearance of the mark; that is, a disclaimer does not physically remove the disclaimed matter from the mark.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965); TMEP §1213. 

 

If applicant does not provide the required disclaimer, the USPTO may refuse to register the entire mark.  See In re Stereotaxis Inc., 429 F.3d 1039, 1040-41, 77 USPQ2d 1087, 1088-89 (Fed. Cir. 2005); TMEP §1213.01(b).

 

Applicant should submit a disclaimer in the following standardized format:

 

No claim is made to the exclusive right to use “HASTINGS PREMIUM FILTERS” apart from the mark as shown.

 

For an overview of disclaimers and instructions on how to satisfy this disclaimer requirement online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/disclaimer.jsp.

 

The examining attorney apologizes for the inconvenience of this additional requirement.

 

Applicant Must Indicate Where Goods Originate

 

Applicant must provide a written statement specifying where the goods come from or originate.  See 37 C.F.R. §2.61(b); In re AOP LLC, 107 USPQ2d 1644, 1650-51 (TTAB 2013); In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004); TMEP §§814, 1210.03.  Failure to comply with a request for information can be grounds for refusing registration.  In re AOP LLC, 107 USPQ2d at 1651; In re DTI P’ship LLP, 67 USPQ2d 1699, 1701-02 (TTAB 2003); TMEP §814. 

 

Applicant Must Indicate Whether Goods are Manufactured, Packaged, Shipped from or Sold in Geographic Area Named in Mark

 

Applicant must also provide a written statement explaining whether the goods are manufactured, packaged, shipped from, sold in or have any other connection with the geographic location named in the mark.  See 37 C.F.R. §2.61(b); In re AOP LLC, 107 USPQ2d 1644, 1650-51 (TTAB 2013); In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004); TMEP §§814, 1210.03.  Failure to comply with a request for information can be grounds for refusing registration.  In re AOP LLC, 107 USPQ2d at 1651; In re DTI P’ship LLP, 67 USPQ2d 1699, 1701-02 (TTAB 2003); TMEP §814. 

 

Ownership of Prior Registrations – Amended Claim Required

 

In its response, applicant provided a claim of ownership of U.S. Registration Number(s) 2032087, 2040277, and 3024445.  However, applicant previously submitted a claim of ownership of U.S. Registration Number 2138935 at the time of filing of the application.  Therefore, applicant must submit an amended claim of ownership to include all claimed registrations.

 

Because applicant owns more than three similar prior registrations, applicant may use the wording “and others” at the end of the ownership statement, as shown below.

 

The following standard format is suggested:

 

Applicant is the owner of U.S. Registration Nos. 2032087, 2040277, and 3024445 and others.

 

Alternatively, the applicant may submit the following:

 

Applicant is the owner of U.S. Registration Nos. 2032087, 2040277, 2138935 and 3024445 and others.

 

The examining attorney apologizes for the inconvenience of this additional requirement.

 

 

 

/Andrew Rhim/

Andrew Rhim

Law Office 101

Phone (571) 272-9711

E-mail: andrew.rhim@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 7/27/2014 FOR U.S. APPLICATION SERIAL NO. 85899507

 

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 7/27/2014 (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.