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 BELOW ISSUE/MAILING DATE.

 

ISSUE/MAILING DATE: 9/22/2014

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the below issues.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

 

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:

 

• Clarification of Classification and Identification of Goods and Services Requirement
• Disclaimer Requirement
• More Accurate Description of the Mark Requirement
• Section 1(b) Basis and Claim of Priority Under Section 44(d) with Intent to Perfect Section 44(e) – Foreign Registration Required

 

 

SUMMARY OF ISSUES about which applicant is advised:

 

• Amendment of International Class 14 Identification Required in Order to Avoid a Section 2(a) Deceptiveness Refusal
• Disclaimer, Without Requested Amendment to Identification, Will Not Overcome Section 2(a) Deceptiveness Refusal

 

 

1. CLARIFICATION OF CLASSIFICATION AND IDENTIFICATION OF GOODS AND SERVICES REQUIRED – INCLUSIVE OF SECTION 2(a) ADVISORY

 

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.

 

1. International Class 14 – Amendment Required to Avoid Section 2(a) Deceptiveness Refusal

 

“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

 

 

2. International Class 41

 

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

 

 

3. Suggested Amended Identifications of Goods and Services

 

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

 

An applicant may only amend an identification to clarify or limit the goods and services, but not to add to or broaden the scope of the goods and/or services.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.

 

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.

 

 

2. DISCLAIMER REQUIRED

 

Applicant must disclaim the acronym “Pt” because it is the actual generic scientific acronym for the goods applicant intends to offer and merely describes a feature and subject matter of applicant’s services, and thus is an unregistrable component of the mark.  See 15 U.S.C. §§1052(e)(1), 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)); TMEP §§1213, 1213.03(a). 

 

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.

 

Material obtained from the Internet is generally accepted as competent evidence.  See In re Rodale Inc., 80 USPQ2d 1696, 1700 (TTAB 2006) (accepting Internet evidence to show genericness); In re Fitch IBCA Inc., 64 USPQ2d 1058, 1060-61 (TTAB 2002) (accepting Internet evidence to show descriptiveness); TBMP §1208.03; TMEP §710.01(b).

 

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/. 

 

Material obtained from applicant’s website is acceptable as competent evidence.  See In re N.V. Organon, 79 USPQ2d 1639, 1642-43 (TTAB 2006); In re Promo Ink, 78 USPQ2d 1301, 1302-03 (TTAB 2006); In re A La Vieille Russie Inc., 60 USPQ2d 1895, 1898 (TTAB 2001); TBMP §1208.03; TMEP §710.01(b).

 

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).

 

 

3. MORE COMPLETE DESCRIPTION OF THE MARK REQUIRED

 

The description of the mark is accurate but incomplete because it does not describe all the significant aspects of the applied-for mark, e.g. the tufts of hair from the top of the mascot’s head.  Applications for marks not in standard characters must include an accurate and concise description of the entire mark that identifies literal elements as well as any design elements.  See 37 C.F.R. §2.37; TMEP §§808 et seq. 

 

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.

 

 

4. SECTIONS 1(b) AND 44(d) WITH INTENT TO PERFECT SECTION 44(e) BASIS – FOREIGN REGISTRATION REQUIRED

 

The application specifies both an intent to use basis under Trademark Act Section 1(b) and a claim of priority under Section 44(d) based on a foreign application.  See 15 U.S.C. §§1051(b), 1126(d); 37 C.F.R. §2.34(a)(2), (a)(4).  However, no copy of a foreign registration has been provided even though the application indicates applicant’s intent to rely on Section 44(e) as an additional basis for registration.  See 15 U.S.C. §1126(e).

 

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

 

Applicant is encouraged to telephone or e-mail the assigned trademark examining attorney to resolve the issues raised in this Office Action by examiner’s amendment.  Although a formal response may never be submitted by e-mail, an applicant may communicate informally by phone or e-mail with the trademark examining attorney to agree to a proposed amendment to the application that will immediately place the application in condition for publication for opposition, issuance of a registration, or suspension.  See TMEP §707.

 

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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 9/22/2014 FOR U.S. APPLICATION SERIAL NO. 86297650

 

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 9/22/2014 (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.