To: | Crane & Co., Inc. (mrb@hblaw.org) |
Subject: | U.S. TRADEMARK APPLICATION NO. 86299772 - INSIGNIA - 14030T |
Sent: | 8/11/2014 10:32:07 AM |
Sent As: | ECOM105@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 86299772
MARK: INSIGNIA
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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: Crane & Co., Inc.
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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: 8/11/2014
SUMMARY OF ISSUES that applicant must address:
SEARCH OF 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).
However, applicant must respond to the following:
SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE
Registration is refused because the applied-for mark merely describes a feature or characteristic of applicant’s goods. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.
A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s goods and/or services. TMEP §1209.01(b); see, e.g., 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 Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005) (citing Estate of P.D. Beckwith, Inc. v. Comm’r of Patents, 252 U.S. 538, 543 (1920)).
The applied-for mark is “INSIGNIA” for “Optically variable security films, foils, sheets, bands, strips, threads and patches composed primarily of plastic for at least partial incorporation in and/or for mounting on: secure documents and cards, in particular passports, visas, licenses, access cards, identification (ID) documents and cards; and security labels for secure goods”.
The term “INSIGNIA” is defined in the MacMillan Dictionary as “a mark on an object that shows who made it, who it belongs to, or what organization it is connected with” and in the Merriam-Webster Dictionary as “a distinguishing mark or sign”. See definitions. The applicant’s goods are various optically variable security films, foils, sheets, bands, strips, threads and patches for incorporation in and/or for mounting on secure documents and cards, in particular passports, visas, licenses and other identification documents as well as security labels for secure goods. Therefore, the term “INSIGNIA” merely describes that the applicant’s goods feature a distinguishing mark or a distinguishing sign for document authentication and security purposes.
Therefore, the mark is merely descriptive and registration is refused under Section 2(e)(1) of the Trademark Act.
Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.
ADVISORY- AMENDMENT TO SUPPLEMENTAL REGISTER ONLY WHEN ALLEGE USE
If applicant files an acceptable allegation of use and also amends to the Supplemental Register, the effective filing date of the application will be the date on which applicant met the minimum filing requirements of 37 C.F.R. §2.76(e) for the amendment to allege use. 37 C.F.R. §2.75(b); TMEP §§816.02, 1102.03. In addition, the undersigned trademark examining attorney will conduct a new search of the Office records for conflicting marks based on the later application filing date. TMEP §§206.01, 1102.03.
Applicant must also respond to the following requirements set forth below.
The wording “and security labels for secure goods” in the identification specifies goods classified in multiple-classes.
For example, “encoded bar code labels” and “electronic tags for goods” are classified in International Class 009; “paper labels” are classified in Class 016; and “plastic labels” (not for luggage) are classified in Class 020.
Therefore, applicant must clarify the nature of these goods to permit proper classification. Please note, if applicant adds one or more of the below International Classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.
As well, applicant must use proper punctuation in the identification and therefore should remove the colon appearing after “for mounting on:”.
Applicant may adopt the following identification, if accurate:
International Class 006: “Security labels for secure goods, namely, tamper-evident metal foil labels used on shipping boxes”.
International Class 009: “Optically variable security films, foils, sheets, bands, strips, threads and patches composed primarily of plastic for at least partial incorporation in and/or for mounting on secure documents and cards, in particular, passports, visas, licenses, access cards, identification (ID) documents and cards; and electronic security labels for secure goods”
International Class 016: “Security labels, namely, paper labels for secure goods”.
International Class 020: “Security labels, namely, plastic labels for secure goods”
An applicant may only amend an identification to clarify or limit the goods and/or 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
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.
MULTIPLE – CLASS APPLICATION REQUIREMENTS
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp). The application identifies goods and/or services that are classified in at least 4 classes; however, applicant submitted a fee sufficient for only 1 class. Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
For an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/multiclass.jsp.
INFORMATION ABOUT GOODS REQUIRED
Due to the descriptiveness of the applied-for mark, applicant must submit additional information about the goods and wording 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, 1402.01(e). Specifically, applicant must submit the following:
Factual information about the goods which makes clear how they operate, salient features, and prospective customers and channels of trade. Conclusory statements will not satisfy this requirement for information.
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. Merely stating that information about the goods is available on applicant’s website is an inappropriate response to a request for additional information and is insufficient to make the relevant information of record. See In re Planalytics, Inc., 70 USPQ2d at 1457-58.
Further, applicant must provide additional information about the wording. Specifically, applicant must respond to the following questions:
1. Does “INSIGNIA” have any meaning or significance in the industry in which the good are provided, or if such wording is a “term of art” within applicant’s industry?
2. Does “INSIGNIA” describe any feature or characteristic of the applicant’s good?
3. Is the term marketed, advertised or described in applicant’s fact sheets, brochures or marketing information as having any meaning in relation to the applicant’s good? If so, please provide copies of such materials.
4. Do applicant’s goods feature or constitute a distinguishing mark or sign?
/Lee-Anne Berns/
Examining Attorney
Law Office 105
571-272-8982
lee-anne.berns@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.