To: | Take-Two Interactive Software, Inc. (Trademarks@kelleydrye.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 86779213 - HANGAR 13 TRADE MARK HAMILTON AFB - N/A |
Sent: | 12/19/2015 7:24:41 AM |
Sent As: | ECOM113@USPTO.GOV |
Attachments: | Attachment - 1 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 86779213
MARK: HANGAR 13 TRADE MARK HAMILTON AFB
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CORRESPONDENT ADDRESS: ANDREA L. CALVARUSO Kelley Drye & Warren Llp |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Take-Two Interactive Software, 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: 12/19/2015
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SEARCH FOR CONFLICTING 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).
DISCLAIMER REQUIREMENT
Applicant must disclaim the wording “”TRADE MARK” because it is merely informational and constitutes a common term that merely denotes the type of rights applicant is seeking in the applied-for mark and does not function as a trademark to indicate the source of applicant’s goods and to identify and distinguish them from others. See 15 U.S.C. §§1051-1053, 1056(a), 1127; In re AOP LLC, 107 USPQ2d 1644, 1654-55 (TTAB 2013); In re Aerospace Optics, Inc., 78 USPQ2d 1861, 1864 (TTAB 2006); TMEP §§807.14(a), 1213.03(a), (b).
Determining whether a term functions as a trademark or service mark depends on how such matter would be perceived by the relevant public. In re Eagle Crest, Inc., 96 USPQ2d 1227, 1229 (TTAB 2010); In re Aerospace Optics, Inc., 78 USPQ2d at 1862; TMEP §1202.04. Terms that are common informational phrases or statements that would ordinarily be used in business or in a particular trade or industry are not registrable. In re Eagle Crest, Inc., 96 USPQ2d at 1229 (citing In re Boston Beer Co., 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999)). The more commonly a phrase is used by various businesses or in a particular trade or industry, the less likely the public will use it to identify only one source and the less likely the phrase will be recognized by purchasers as a trademark or service mark. In re Eagle Crest, Inc., 96 USPQ2d at 1229 (citing Reed v. Amoco Oil Co., 611 F. Supp. 9, 12, 225 USPQ 876, 877 (M.D. Tenn. 1984)); TMEP §1202.04.
In addition, applicant must also disclaim the letters “US”, because it is primarily geographically descriptive of the origin of applicant’s goods, and thus is an unregistrable component of the mark. See 15 U.S.C. §§1052(e)(2), 1056(a); In re Societe Generale des Eaux Minerales de Vittel S.A., 824 F.2d 957, 959, 3 USPQ2d 1450, 1451-52 (Fed. Cir. 1987); In re Joint-Stock Co. “Baik”, 80 USPQ2d 1305, 1309 (TTAB 2006); TMEP §§1210.01(a), 1210.06(a), 1213.03(a).
The attached evidence shows that US is an abbreviation for the United States, which is a generally known geographic place or location. See http://www.ahdictionary.com/word/search.html?q=US&submit.x=0&submit.y=0; see also TMEP §§1210.02 et seq. The goods for which applicant seeks registration originate in this geographic place or location as shown by applicant’s address. See TMEP §1210.03. Purchasers are likely to believe the goods originate in this geographic place or location because the goods actually originate there, and therefore, there is a presumption that a goods-place association exists. See TMEP §§1210.04 et seq.
An applicant may not claim exclusive rights to an unregistrable component of a mark, such as informational matter regarding the goods or geographically descriptive terms for the origins of the goods. See 15 U.S.C. §1056(a); TMEP §1213.03(a), (b). 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, 979-80, 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 “TRADE MARK” and “US” 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.
REQUEST FOR INFORMATION REQUIREMENT
Applicant must provide a written statement explaining whether the goods will be manufactured, packaged, shipped from, sold in or will have any other connection with the geographic location named in the mark (HAMILTON AFB and/or NOVATO, CA). 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, 1210.03. 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 GUIDELINES
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. 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.
/Brin Anderson Desai/
Brin Anderson Desai
Trademark Examining Attorney
Law Office 113
571-272-6399
Brin.Desai@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.