To: | Alfred Franks & Bartlett PLC (ipdocket@thompsoncoburn.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 86097141 - TORTOISE - 55025-126108 |
Sent: | 2/10/2014 7:44:05 PM |
Sent As: | ECOM107@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 86097141
MARK: TORTOISE
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Alfred Franks & Bartlett PLC
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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: 2/10/2014
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
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
SECTION 2(e)(1) REFUSAL – MERELY DESCRIPTIVE
The applicant applied to register the mark TORTOISE for “Cases and protective cases for mobile telephones and portable media players; protective covers for mobile telephones and portable media players; headphones, earphones, audio speakers, portable audio speakers; screen protectors for mobile telephones and portable media players; chargers, travel chargers, in-car chargers and portable chargers, all for mobile telephones, portable media players and satellite navigation devices; cradles, stands, holders and in-car holders for mobile telephones, portable media players and satellite navigation devices; armbands for attaching mobile telephones and portable media players to the body; parts and fittings for all the aforesaid goods.”
TORTOISE refers to a spotted design resembling that of a tortoise shell that is often used on cases for items such as mobile devices and eyeglasses and other accessories. See the attached evidence demonstrating that the word is used to describe goods similar to those of the applicant’s that bear a specific design. See the attached at http://www1.macys.com/shop/product/michael-michael-kors-iphone-5-tortoise?ID=1083992 (2/10/14); http://www.jcrew.com/womens_category/accessories/techgear/PRDOVR~47137/47137.jsp (2/10/14); http://www.verdiblu.com/products/cell-phone-case-in-tortoise-print (2/10/14); http://www.polyvore.com/tory_burch_samsung_galaxy_s4/thing?id=91243200 (2/10/14); http://shopper.cnet.com/cell-phones/golden-tortoise-iphone-5/4414-6454_9-1308604065.html (2/101/14). The term is descriptive in relation to the pattern or design appearing on the goods and registration on the Principal Register must be refused under Trademark Act Section 2(e)(1).
Although the trademark examining attorney has refused registration, applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.
SUPPLEMENTAL REGISTER- Advisory
If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following requirements.
IDENTIFICATION OF GOODS
The applicant may adopt the following wording if accurate:
Cases and protective cases for mobile telephones and portable media players; protective covers for mobile telephones and portable media players; headphones, earphones, audio speakers, portable audio speakers; screen protectors specially adapted for mobile telephones and portable media players; {specify the type of chargers e.g., battery}chargers, travel chargers, in-car chargers and portable chargers, all for mobile telephones, portable media players and satellite navigation devices; cradles, stands, holders and in-car holders for mobile telephones, portable media players and satellite navigation devices; armbands specially adapted for personal electronic devices, namely, for attaching mobile telephones and portable media players to the body; parts and fittings for all the aforesaid goods, namely, {applicant must list specific parts and fittings by common commercial name alternatively, the applicant should specify that said parts and fittings are sold as a component or unit with the goods}, in International Class 9.
Please note that, while the identification of goods may be amended to clarify or limit the goods, adding to the goods or broadening the scope of the goods is not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, applicant may not amend the identification to include goods that are not within the scope of the goods set forth in the present identification.
For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.
OPTION TO DELETE FILING BASIS
Unless applicant indicates otherwise, the USPTO will presume that applicant is relying on both Sections 1(b) and 44(e). Thus, although the mark may be approved for publication, it will not register until an acceptable allegation of use has been filed for the goods and/or services based on Section 1(b).
INFORMATION REQUEST
Therefore, applicant must submit samples of advertisements or promotional materials and/or a photograph of the identified goods. If such materials are not available, applicant must submit samples of advertisements or promotional materials and a photograph of similar goods. In addition, applicant must describe in detail the nature, purpose, and channels of trade of the goods. The applicant must also specify whether the goods have a tortoise shell design or pattern.
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 at 1701-02; TMEP §814.
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 §§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.
/enkajubi/
Elizabeth N. Kajubi
Examining Attorney
Law Office 107
(571) 272-2727
elizabeth.kajubi@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.