To: | TANAKA HOLDINGS Co., Ltd. (ipprosecution@orrick.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 86297650 - PT - 30276.6002 |
Sent: | 9/22/2014 3:40:41 PM |
Sent As: | ECOM117@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 Attachment - 17 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 86297650
MARK: PT
|
|
CORRESPONDENT ADDRESS: JOSEPH A. CALVARUSO & KRISTIN S. CORNUEL |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
|
APPLICANT: TANAKA HOLDINGS Co., Ltd.
|
|
CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
|
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 BELOW ISSUE/MAILING DATE.
RESULTS OF SEARCH OF THE 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).
Although no similar registered or pending marks have been found that would bar registration, applicant must respond to the following requirements:
SUMMARY OF ISSUES that applicant must address:
SUMMARY OF ISSUES about which applicant is advised:
Please Note:
The below requirements are applicable to the goods in International Class 14 and the services in International Class 41.
These requirements do not apply to the services identified in International Class 35 which are acceptable as written and classified and have been made part of the record.
“Precious metals” in applicant’s identification of goods in International Class 14 is an acceptable identification; however, the use or intended use of the applied-for mark, Pt and design, on goods that do not in fact have “platinum” is or will be deceptive. See TMEP §1203.02-.02(b). Please see the attached copy of the periodic table from Ptable as found at http://www.ptable.com/ and the attached dictionary definition from Oxford Dictionaries, as per the attached from http://www.oxforddictionaries.com/us/definition/american_english/platinum, which all indicate that “Pt” is the symbol for “platinum” and which the Oxford Dictionaries defines as “a precious silvery-white metal.”
To avoid a deceptiveness refusal, applicant must amend the identification to indicate that the goods possess this relevant feature or characteristic. See TMEP §§1203.02(e)(ii), (f)(i), 1402.05 et seq. Merely amending the identification to exclude goods with the named feature or characteristic will not avoid a deceptiveness refusal. TMEP §1203.02(f)(i).
Therefore, applicant must amend the identification to the following, if accurate:
Precious metals, namely, platinum, in International Class 14
Please Note:
The following are acceptable as classified and written and have been made part of the record for International Class 41:
Arranging, conducting and organization of seminars relating to precious metals; organizing, arranging and conducting of exhibitions of precious metals for cultural or educational purposes
“Educational services relating to precious metals,” however, requires additional modification. The wording “educational services” in the identification of services is indefinite and must be clarified because it does not specify how the educational services will be provided, e.g., via classes, seminars, workshops. See TMEP §1402.01.
Therefore, applicant must amend the identification to specify the form of delivery of the “educational services.”
The following format is suggested:
Educational services, namely, classes and seminars in the field of precious metals, in International Class 41
“Educational and instruction services relating to arts, crafts, sports or general knowledge” are, also as with the preceding identification inclusive of indefinite wording, namely, “educational and instructional services,” which requires clarification as to how the specific “educational and instructional” services will be rendered. See id.
Further, “general knowledge” must be clarified to indicate the particular field of the “general knowledge” about which applicant’s services will pertain. Id. Thus, applicant must provide the common commercial name of the subject area of the “general knowledge,” e.g. math, science, literature. Id.
For example, the below is an acceptable amendment that applicant may adopt, if accurate:
Educational and instruction services, namely, conducting workshops, seminars, courses, and classes relating to arts, crafts, sports or general knowledge in the fields of literature and science, in International Class 41
“Arranging, conducting and organization of exhibitions for precious metals” is indefinite and overly broad as the identification as presently stated is inclusive of more than one international class. See TMEP §§1402.01, 1402.03. Clarification as to the purpose for which the services are provided is necessary in order for proper classification and identification to be made, e.g. exhibitions for business purposes are in International Class 35 and exhibitions for entertainment purposes are in International Class 41.
Additionally, to ensure the understanding of the identification, applicant should also amend “for precious metals” to “in the field of precious metals.” See TMEP §1402.01.
Thus, by way example, the following may be adopted by applicant, if accurate:
Arranging, conducting and organization of exhibitions in the field of precious metals for business purposes, in International Class 35; and
Arranging, conducting and organization of exhibitions in the field of precious metals for entertainment purposes, in International Class 41
Based on the foregoing, the following suggested amended identification of services may be adopted by applicant, with proposed amendments noted in bold, if accurate:
International Class 14
Precious metals, namely, platinum
International Class 35
Organizing, arranging and conducting of exhibitions of precious metals for commercial or advertising purposes; arranging, conducting and organization of exhibitions in the field of precious metals for business purposes
International Class 41
Educational services, namely, providing {please specify the form of educational activity, e.g., classes, seminars, workshops} relating to precious metals; educational and instruction services, namely, conducting {please indicate specific mode of instructions, e.g., classes, seminars, conferences, workshops} relating to arts, crafts, sports or general knowledge in the field of {please specify the common commercial name of the field or subject matter of the “general knowledge,” e.g. math, science, literature, theater}; arranging, conducting and organization of seminars relating to precious metals; arranging, conducting and organization of exhibitions in the field of precious metals for entertainment purposes; organizing, arranging and conducting of exhibitions of precious metals for cultural or educational purposes
Additions to Identifications of Goods and Services Not Permitted
Online Manual of Acceptable Identifications
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 at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.
The attached evidence from Ptable as found at http://www.ptable.com/ consists of a periodic table that shows “Pt” is the symbol for “platinum.” Further, the attached dictionary definition from Oxford Dictionaries, http://www.oxforddictionaries.com/us/definition/american_english/platinum, shows that “Pt” is the symbol for “platinum” and is defined as “a precious silvery-white metal.”
This understanding is further supported by the Internet evidence from Overstock, at http://www.overstock.com/guides/precious-metal-jewelry-buying-guide, which consists of a screenshot of a website page that is a “Guides at Overstock.com,” more specifically a “Precious Metals Buying Guide” which provides guidance as to how to purchase “precious metals” and defines “precious metals” as “gold, silver or any of what are now called the PGM, platinum metals. Platinum group metals include platinum, iridium, palladium, ruthenium, rhodium, and osmium.” Emphasis added.
Additionally, according to the attached pages from applicant’s website, Tanaka at http://www.tanaka.co.jp/english/about/group/thd.html and specifically at applicant’s “About” page as found at http://www.tanaka.co.jp/english/about/, applicant is “a leading company in the field of precious metals.” Applicant’s website also provides information about applicant’s network which is inclusive of Tanaka Kikinzoku Kogyo K.K. whose profile indicates that it provides “sales of precious metals (Platinum, Gold, Silver, and others.)” Please see the attached from http://www.tanaka.co.jp/english/about/group/.
Accordingly, from the evidence, the “Pt” in applicant’s mark is shown to mean “platinum” and “platinum” is a “precious metal.” Therefore, as applicant offers “precious metals” and “platinum” is a precious metal, it will be the precious metal offered by applicant under the applied-for mark and the presence of “Pt” in applicant’s mark is thus generic for the goods identified by applicant and descriptive of the subject matter of applicant’s identified services of exhibits and educational and instructional services.
An applicant may not claim exclusive rights to terms that others may need to use to describe their goods and services 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, 978, 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 “Pt” 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.
ADVISORY: A DISCLAIMER DOES NOT OVERCOME A
SECTION 2(a) DECEPTIVENESS REFUSAL
Applicant must be aware that, in the event the requested amendment of its International Class 14 goods is not provided and a subsequent Section 2(a) Refusal must issue, the TMEP specifically provides in Section 1203.02:
Section 2(a) of the Trademark Act, 15 U.S.C. §1052(a), is an absolute bar to the registration of deceptive matter on either the Principal Register or the Supplemental Register. Neither a disclaimer of the deceptive matter nor a claim that it has acquired distinctiveness under §2(f) can obviate a refusal under §2(a) on the ground that the mark consists of or comprises deceptive matter. See Am. Speech-Language-Hearing Ass’n v. Nat'l Hearing Aid Society, 224 USPQ 798, 808 (TTAB 1984); In re Charles S. Loeb Pipes, Inc., 190 USPQ 238, 241 (TTAB 1975).
Therefore, applicant must provide a more complete description of the applied-for mark. The following is suggested:
The mark consists of a fanciful mascot character, facing to the left, with a smiling face, wide oval eyes, two tufts of hair on top of its head, flexed arms, two feet standing apart, a tail, and the letters “Pt” in stylized outlined font in the center of the mascot’s chest.
An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin. 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016. In addition, an applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law. 15 U.S.C. §1126(b); TMEP §§1002.01, 1004.
Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available. TMEP §1003.04(a). A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin. TMEP §1004.01. If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin. TMEP §1016. In addition, applicant must also provide an English translation if the foreign registration is not written in English. 37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b). The translation should be signed by the translator. TMEP §1004.01(b).
If the foreign registration has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English translation, as appropriate), applicant should so inform the trademark examining attorney and request that the U.S. application be suspended until a copy of the foreign registration is available. TMEP §§716.02(b), 1003.04(b).
If applicant cannot satisfy the requirements of a Section 44(e) basis, applicant may request that the mark be approved for publication based solely on the Section 1(b) basis. See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.35(b)(1); TMEP §§806.02(f), 806.04(b), 1003.04(b). Although the mark may be approved for publication on the Section 1(b) basis, it will not register until an acceptable allegation of use has been filed. See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103. Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration. See 37 C.F.R. §2.35(b)(1), (4); TMEP §§806.02(f), 806.04(b).
TELEPHONE OR E-MAIL OR, ALTERNATIVELY, TEAS RESPONSE SUGGESTED
Or, alternatively, 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.
Further action on the subject application awaits applicant’s response to the above detailed issues.
Sincerely,
/Kathleen L. Kolacz/
Kathleen L. Kolacz
Trademark Examining Attorney
Law Office 117
phone: (571) 272-3650
email: kathleen.kolacz@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.