UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

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

 

 

 

PRIORITY 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 ISSUE/MAILING DATE BELOW.

 

ISSUE/MAILING DATE: 6/23/2015

 

 

 

DATABASE SEARCH:  The trademark examining attorney has searched the USPTO’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).

 

ISSUES APPLICANT MUST ADDRESS:  On June 23, 2015, the trademark examining attorney and  Herve N. Linder discussed the issue of the Drawing page and the Applicant indicated that “the mark” was the shield and design on candle holder and not the candle/candle holder itself.  A new drawing page addressing that issue is required below.  Applicant must timely respond to these issues.  See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §§708, 711.

 

TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE:  Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application.  See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820.  TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $50 per international class of goods and/or services.  37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04.  However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone without incurring this additional fee. 

 

Summary of Issues that Applicant Must Address

 

The applicant must address the following issues:

 

(1)  New Drawing Page Required – Delete Depiction of Candle and Candle Holder from Drawing Page – Not a Part of the Mark

(2)  Amended Description of the Mark Required

(3)  Amended Translation of Foreign Wording Required

(4)  Disclaimer Required

(5)  Unnecessary 2(f) Based on Prior Registration Should be Withdrawn

 

New Drawing Page Required – Delete Depiction of Candle and Candle Holder from the Drawing Page – Not a Part of the Mark

 

Applicant must submit a new drawing showing the candle and candle holder deleted from the mark because (a) via a phone inquiry, the Applicant clarified that these elements are not a part of the mark, (b) they would functional and generic and would need to be deleted from the mark or marked in dotted lines to indicate that they are not a part of the mark and only displayed to show placement on the mark.  This matter is not part of the mark.  See TMEP §§807.02, 807.14(a).

 

The Applicant indicated that they would submit a new drawing page showing only the mark (and not the candle or candle holder).

 

A special form drawing must show the mark (1) in black on a white background, if color is not a feature of the mark, or (2) in color on a white background, if color is a feature of the mark.  37 C.F.R. §2.52(b); see TMEP §807.04.  In addition, the mark must be shown clearly so as to produce a high quality image when copied; all lines in the drawing must be clean, sharp, solid, and not fine or crowded.  See 37 C.F.R. §§2.52, 2.53(c), 2.54(e); TMEP §807.04(a).

 

To submit a new drawing via the Trademark Electronic Application System (TEAS), applicant must use the response form and follow the instructions regarding submission of a drawing.  TMEP §807.05(b); see 37 C.F.R. §2.53(b).  An applicant must submit a drawing via TEAS in jpg format, and the USPTO recommends a digitized image with a length and width no smaller than 250 pixels and no larger than 944 pixels.  37 C.F.R. §2.53(c); TMEP §807.05(c).

 

 

Amended Description of the Mark Required

 

Applicant must submit an accurate and concise description of the literal and design elements in the mark.  37 C.F.R. §2.37; see TMEP §§808.01, 808.02. 

 

The following is suggested, if accurate:

 

The mark consists of a gold shield design with the wording “CIRE TRUDON” in gold in the lower third of the mark with "Manufacture Royale de Cire 1643" in gold underneath.  In the center of the shield design is a stylized gold beehive with multiple gold bees flying around it.  There is a gold banner above the beehive with the wording “DEO REGIQUE LABORANT” written in gold.  There is a stylized gold crest above this banner.

 

 

 

Amended Translation of Foreign Wording Required

 

Applicant must submit an English translation of all foreign wording in the mark.  37 C.F.R. §2.32(a)(9); see TMEP §809.  In the present case, the wording “CIRE” AND “MANUFACTURE ROYALE DE CIRE” requires translation.

 

(1)  Both instances of “cire” must be translated.

(2)  The reference to the foreign wording “manufacture” must correct the typo.

 

The following translation statement is suggested: 

 

The English translation of the word “CIRE” in the mark is “WAX” and the wording “MANUFACTURE ROYALE DE CIRE” is “ROYAL WAX MANUFACTURER”. 

 

TMEP §809.03.  See attached translation evidence.

 

·       Note:  Latin phrases are not required to be translated (unless they are commonly translated, such as in current news stories).  So, the suggested amended translation above is all that will be required.  It is noted that “Deo Regique Laborant” is translated in Latin as “They work for God and for the King”.  See attached reference that is referencing the Applicant specifically.  If desired, the Applicant could add a translation of this wording, but it is not required.

 

That amended Translation would look as follows:

 

The English translation of the word "CIRE" in the mark is "WAX" and the wording "MANUFACTURE ROYALE DE CIRE" is "ROYAL WAX MANUFACTURER" and the Latin phrase “DEO REGIQUE LABORANT” is “THEY WORK FOR GOD AND FOR THE KING”.

 

 

Disclaimer Required

 

Applicant must disclaim the wording “CIRE” AND “MANUFACTURE ROYALE DE CIRE” AND “1643” because it merely describes an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or 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). 

 

Non-English wording that is merely descriptive, deceptively misdescriptive, geographically descriptive, generic, or informational in connection with the identified goods and/or services, is an unregistrable component of the mark that is subject to disclaimer.  TMEP §§1213.03(a), 1213.08(d); see Bausch & Lomb Optical Co. v. Overseas Fin. & Trading Co., 112 USPQ 6, 8 (Comm’r Pats. 1956).  The disclaimer must refer to the actual non-English wording that appears in the mark, not the English translation of that wording.  TMEP §1213.08(d).

 

The attached evidence from Google translate and the Applicant’s current translation of record show the wording “CIRE” means and/or is commonly used in connection with similar goods and/or services to mean “WAX” and “MANUFACTURE ROYALE DE CIRE” means “royal wax manufacturer”.  Therefore, the wording merely describes features of the Applicant’s goods because candles are made of wax and the Applicant was once the royal wax manufacture and continues to promote that historical status on its website.  See attached.

 

An applicant may not claim exclusive rights to terms that others may need to use to describe their goods and/or 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 “CIRE” AND “MANUFACTURE ROYALE DE CIRE” AND “1643” 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.

 

Note:  If applicant believes that a portion of the mark has acquired distinctiveness, applicant may amend the application to add a claim of acquired distinctiveness as to that portion under Trademark Act Section 2(f).  See 15 U.S.C. §1052(f); TMEP §1212.02(f)(i).  Evidence in support of this claim may consist of one or more of the following:

 

(1)    A statement verified by applicant that that portion of the mark has become distinctive of applicant’s goods and/or services by reason of substantially exclusive and continuous use in commerce by applicant for the five years before the date when the claim of distinctiveness is made.  TMEP §1212.02(f)(i); see 15 U.S.C. §1052(f); 37 C.F.R. §2.41(b).  Applicant must submit the following statement, if accurate: 

 

The wording “MANUFACTURE ROYALE DE CIRE” in the mark has become distinctive of the goods and/or services through applicant’s substantially exclusive and continuous use in commerce for at least the five years immediately before the date of this statement. 

 

TMEP §1212.05(d).

 

Note:  If Applicant elects to claim 2(f)-in-part as to “MANUFACTURE ROYALE DE CIRE” then an amended Disclaimer of “CIRE” AND “1643” would still need to be made.

 

(2)  Other evidence of acquired distinctiveness of that portion of the mark, such as specific dollar sales, advertising figures, samples of advertising, affidavits, consumer or dealer statements of recognition of, or any other evidence that establishes the distinctiveness of, that portion of the mark as an indicator of source.  See 37 C.F.R. §2.41(a); In re Ideal Indus., Inc., 508 F.2d 1336, 184 USPQ 487 (C.C.P.A. 1975); In re Instant Transactions Corp., 201 USPQ 957 (TTAB 1979); TMEP §§1212.02(f)(i), 1212.06 et seq. 

 

Unnecessary 2(f) Based on Prior Registration Should be Withdrawn

 

Applicant claims that the applied-for mark has acquired distinctiveness under Trademark Act Section 2(f) based on the prior Registration No. 3655385 for TRUDON; however, this claim is unnecessary because the mark appears to be inherently distinctive and is eligible for registration on the Principal Register without proof of acquired distinctiveness.  See 15 U.S.C. §1052(f); TMEP §1212.02(d). 

 

Note: Particularly – as to the wording “TRUDON” within the Applicant’s current stylized mark – no 2(f) claim is needed.  So, basing a 2(f) claim on this prior registration does not make sense and should be deleted.

 

Applicant may request to withdraw the claim of acquired distinctiveness by instructing the trademark examining attorney to delete it from the application record.  See TMEP §1212.02(d).  If applicant does not withdraw the claim, it will remain in the application record and be printed on the registration certificate.

 

A claim of acquired distinctiveness may be construed as a concession by applicant that the applied-for mark is not inherently distinctive.  In re Reed Elsevier Prop. Inc., 77 USPQ2d 1649, 1652 n.3 (TTAB 2005), aff'd, 482 F.3d 1376, 82 USPQ2d 1378 (Fed. Cir. 2007); see TMEP §1212.02(b).

 

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

 

/Gina M. Fink/

Trademark Examining Attorney

Law Office 109

Phone: (571) 272-9275

Law Office 109 Fax: (571) 273-9109

gina.fink@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 6/23/2015 FOR U.S. APPLICATION SERIAL NO. 86570155

 

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 6/23/2015 (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.