To: | Shenzhen djembe technology co., LTD (1157511288@qq.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 86646604 - GENERIC - N/A |
Sent: | 9/25/2015 1:09:31 PM |
Sent As: | ECOM102@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. 86646604
MARK: GENERIC
|
|
CORRESPONDENT ADDRESS: SHENZHEN DJEMBE TEC; SHENZHEN DJEMBE TEC |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
|
APPLICANT: Shenzhen djembe technology 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 ISSUE/MAILING DATE BELOW.
ISSUE/MAILING DATE: 9/25/2015
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SUMMARY OF ISSUES that applicant must address:
SEARCH RESULTS
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).
REFUSAL OF REGISTRATION: FAILURE TO FUNCTION
The applied-for mark is the term GENERIC. Consumers who encounter the term GENERIC on goods would not view the term GENERIC as a source indicator. For example, if the applicant’s mark was ABC COMPANY, consumers would understand that the goods are ABC COMPANY brand items; consumers would know that the source of the goods is ABC COMPANY. If the term GENERIC is used on the goods, consumers would believe that the goods are a generic brand. The attached from http://thelawdictionary.org/generic/ defines generic as “an item marketed with no brand name, trademark, or other distinguishing feature. Nothing separates it from other similar items except for it market name.” Upon encountering the term GENERIC on the applicant’s goods, consumers would not know the source of the goods. Consumers would believe that they are purchasing generic rather than branded goods.
For the foregoing reasons, GENERIC fails to function as a source indicator for the class 9 goods and refusal under Trademark Act Sections 1, 2, and 45 is appropriate.
REFUSAL OF REGISTRATION: DESCRIPTIVENESS—Section 2(e)(1)
Registration is refused because the applied-for mark merely describes a characteristic of applicant’s goods and/or services. 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., In re TriVita, Inc., 783 F.3d 872, 874, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015) (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 applicant’s proposed mark is GENERIC. The definition of GENERIC noted above indicates GENERIC means that the goods do not have a brand name or other feature that distinguishes them from other sources. The applicant’s goods will be GENERIC in that the goods will not have source indicators. The applicant’s goods will be generic goods; thus the term GENERIC describes a feature of the applicant’s goods and refusal under Section 2(e)(1) is appropriate.
REQUEST FOR INFORMATION
(1) Fact sheets, instruction manuals, brochures, advertisements and pertinent screenshots of applicant’s website as it relates to the goods and/or services. Merely stating that information about the goods and/or services is available on applicant’s website is insufficient to make the information of record.
If these materials are unavailable, applicant should submit similar documentation for goods and services of the same type, explaining how its own product or services will differ. If the goods and/or services feature new technology and information regarding competing goods and/or services is not available, applicant must provide a detailed factual description of the goods and/or services. Factual information about the goods must make clear how they operate, salient features, and prospective customers and channels of trade. For services, the factual information must make clear what the services are and how they are rendered, salient features, and prospective customers and channels of trade. Conclusory statements will not satisfy this requirement.; and
(2) Applicant must respond to the following questions:
a) Applicant must provide its website address.
b) Applicant must indicate how it will use the mark on the goods.
c) Applicant must provide photographs of the mark on the goods.
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).
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.
RESPONSE
Identification of Goods
The examining attorney accepts the identification of goods in class 9 with the exception of the duplicate entries of antennas and tripods.
The identification of goods and/or services in International Class 9 includes a duplicate entry of the wording “antennas and tripods.” Applicant may either (1) modify one of these multiple identical descriptions of goods and/or services such that it will no longer be duplicative, or (2) delete the multiple entries. See TMEP §707.02. However, if applicant modifies the goods and/or services, applicant may do so only to clarify or limit them; adding to or broadening the scope of the goods and/or services is not permitted. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.
An applicant may only amend an identification to clarify or limit the goods, but not to add to or broaden the scope of the goods. 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.
If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end, the trademark will fail to register, and the application fee will not be refunded. See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a), 2.209(a); TMEP §§405.04, 718.01, 718.02. Where the application has been abandoned for failure to respond to an Office action, applicant’s only option would be to file a timely petition to revive the application, which, if granted, would allow the application to return to active status. See 37 C.F.R. §2.66; TMEP §1714. There is a $100 fee for such petitions. See 37 C.F.R. §§2.6, 2.66(b)(1).
Foreign Attorney Advisory
When responding to this Office action, please note that the only attorneys who may sign responses and otherwise practice before the USPTO in trademark matters are as follows:
(1) Attorneys in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and other federal territories and possessions of the United States
(2) Canadian agents/attorneys who represent applicants located in Canada and (a) are registered with the USPTO and in good standing as patent agents or (b) have been granted reciprocal recognition by the USPTO
See 37 C.F.R. §§2.17(a), (e), 2.62(b), 11.1, 11.14(a), (c); TMEP §§602, 712.01.
Foreign attorneys, other than authorized Canadian attorneys, are not permitted to represent applicants before the USPTO (e.g., file written communications, authorize an amendment to an application, or submit legal arguments in response to a requirement or refusal). See 37 C.F.R. §§2.17(e), 11.14(c), (e); TMEP §602.03-.03(c).
Unless the identified foreign attorney can establish that he or she is authorized under 37 C.F.R. §11.14, then this attorney is not authorized to practice before the USPTO in trademark matters and may not sign responses or otherwise represent applicant in this application. See 37 C.F.R. §2.62(b); TMEP §602.03(e). Any power of attorney to this foreign attorney is void ab initio. TMEP §602.03(e).
/Kim Saito/
Trademark Examining Attorney LO102
kim.saito@uspto.gov
571.272.9214
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.