Suspension Letter

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

SUSPENSION NOTICE: NO RESPONSE NEEDED

 

ISSUE/MAILING DATE: 12/16/2015

 

 

The trademark examining attorney is suspending action on the application for the reason(s) stated below.  See 37 C.F.R. §2.67; TMEP §§716 et seq. 

 

FOREIGN REGISTRATION:  Applicant is required to provide a true copy, a photocopy, a certification, or a certified copy of a foreign registration from applicant’s country of origin that will be in force at the time the United States registration issues.  15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii)-(iii); In re Societe D’Exploitation de la Marque Le Fouquet’s, 67 USPQ2d 1784, 1788-89 (TTAB 2003); TMEP §§1003.04(a)-(b), 1004.01, 1004.01(a).  Action on this application is suspended until the USPTO receives a copy of such foreign registration or proof of its renewal.  TMEP §§716.02(b), 1003.04(a)-(b), 1004.01(a).  If the foreign registration or renewal document is not in English, applicant must provide an English translation.  37 C.F.R. §2.34(a)(3)(ii)-(iii); TMEP §1004.01(b).  Further, applicant should notify the trademark examining attorney in the event that the foreign application abandons or the foreign registration is not renewed.  See TMEP §§1003.08, 1004.01(a).  In such case, applicant may amend the application to rely on another basis, if appropriate, and will retain the priority filing date, if applicable.  TMEP §§1003.08, 1004.01(a).

 

REFUSAL(S)/REQUIREMENT(S) CONTINUED AND MAINTAINED:  The following refusal(s)/requirement(s) is/are continued and maintained:

 

1.  Surname Refusal under Section 2(e)(4) – Maintained and Continued

 

The applicant’s claim of acquired distinctiveness is insufficient because the evidence consists of nothing more than advertising for the goods. Applicant has provided advertising for the goods at issue; however, such evidence is not dispositive of whether the proposed mark has acquired distinctiveness.  Such promotion may demonstrate the commercial success of applicant’s goods, but not that relevant consumers view the matter as a mark for such goods.  See In re Boston Beer Co., 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999); In re Busch Entm’t Corp., 60 USPQ2d 1130, 1134 (TTAB 2000).

 

Similarly, any advertising expenditures are merely indicative of its efforts to develop distinctiveness; not evidence that the mark has acquired distinctiveness.  See In re Pennzoil Prods. Co., 20 USPQ2d 1753 (TTAB 1991).

 

The burden of proving that a mark has acquired distinctiveness is on the applicant.  Yamaha Int’l Corp. v. Yoshino Gakki Co., 840 F.2d 1572, 6 USPQ2d 1001, 1004 (Fed. Cir. 1988); In re Meyer & Wenthe, Inc., 267 F.2d 945, 122 USPQ 372 (C.C.P.A. 1959); TMEP §1212.01.  An applicant must establish that the purchasing public has come to view the proposed mark as an indicator of origin.

 

Allegations of sales and advertising expenditures do not per se establish that a term has acquired significance as a mark.  An applicant must also provide the actual advertising material so that the examining attorney can determine how the term is used, the commercial impression created by such use, and the significance the term would have to prospective purchasers.  TMEP §1212.06(b); see In re Boston Beer Co., 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999); In re Packaging Specialists, Inc., 221 USPQ 917, 920 (TTAB 1984).

 

The ultimate test in determining acquisition of distinctiveness under Trademark Act Section 2(f) is not applicant’s efforts, but applicant’s success in educating the public to associate the claimed mark with a single source.  TMEP §1212.06(b); see In re Packaging Specialists,221 USPQ at 920; In re Redken Labs., Inc., 170 USPQ 526 (TTAB 1971).

 

Based on the above, the refusal under Section 2(e)(4) is maintained and continued.

 

2.  Requirement for Color Location Statement – Maintained and Continued

 

Applicant has submitted a color drawing and provided a color claim, but has not provided the required description specifying where color appears in the literal and design elements in the mark.  See 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §807.07(a)-(a)(ii).

 

Generic color names must be used to describe the colors in the mark, e.g., magenta, yellow, turquoise.  TMEP §807.07(a)(i)-(ii).  If black, white, and/or gray are not being claimed as a color feature of the mark, applicant must exclude them from the color claim and include in the mark description a statement that the colors black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark.  See TMEP §807.07(d).

 

Therefore, applicant must provide a mark description that specifies where all the colors appear in the literal and design elements in the mark.  See TMEP §807.07(a)(ii).  The following is suggested, if accurate:

 

The mark consists of the term “SCHMIDT” in stylized form wherein the color red appears in the letter “C” and the line underneath it, and the color grey appears in the remaining letters.

 

NOTE: the amended identification of goods and signed declaration are acceptable.

 

 

The USPTO will periodically conduct a status check of the application to determine whether suspension remains appropriate, and the trademark examining attorney will issue as needed an inquiry letter to applicant regarding the status of the matter on which suspension is based.  TMEP §§716.04, 716.05.  Applicant will be notified when suspension is no longer appropriate.  See TMEP §716.04.

 

No response to this notice is necessary; however, if applicant wants to respond, applicant should use the “Response to Suspension Inquiry or Letter of Suspension” form online at http://teasroa.gov.uspto.report/rsi/rsi.

 

 

 

/Karen Bracey/

Karen Bracey

Examining Attorney

Law Office 116

571-272-9132

karen.bracey@uspto.gov

 

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 Trademark Electronic Application System (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 12/16/2015 FOR U.S. APPLICATION SERIAL NO.86532138

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.gov.uspto.report/, 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)  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

 

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.