To: | Netid, Anatolie (tolykkzw@yahoo.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 87064121 - MIMOSA - N/A |
Sent: | 8/4/2017 9:21:36 AM |
Sent As: | ECOM121@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 87064121
MARK: MIMOSA
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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: Netid, Anatolie
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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. A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.
ISSUE/MAILING DATE: 8/4/2017
Introduction
This Office action is in response to applicant’s communication filed on July 5, 2017 and August 1, 2017.
In a previous Office action(s) dated October 28, 2016, the trademark examining attorney refused registration of the applied-for mark based on the following: Trademark Act Section 2(d) for a likelihood of confusion with registered marks.
In applicant’s responses, applicant submitted an amended drawing in color and claimed the colors blue and orange. However, applicant did not provide any arguments as to the Section 2(d) refusals. Applicant’s response raises new issues that must be addressed; therefore, this nonfinal Office action is being issued to address this new issues. Further, the Section 2(d) refusals are continued and maintained for the reasons stated in the October 28, 2016 Office action.
Accordingly, applicant must respond to all refusals and/or requirements raised in this Office action and the previous Office action, within six months of the date of issuance of this Office action. 37 C.F.R. §2.62(a). If applicant does not respond within this time limit, the application will be abandoned. 37 C.F.R. §2.65(a).
Summary of Issues:
Section 2(d) Refusal – Likelihood of Confusion
Applicant’s mark is MIMOSA, with a design element, for use on:
Class 43: Restaurant and bar services
The registered mark in U.S. Registration No. 2379622 is MIMOSA GRILL, in standard characters, for use on:
Class 42: restaurant services
The registered mark in U.S. Registration No. 4216849 is MIMOSA ASIAN FUSION RESTAURANT, in standard characters, for use on:
Class 43: Bar services; Delicatessen services; Fast-food restaurant services; Restaurant and catering services; Restaurant reservation services; Restaurant services; Restaurant services featuring sushi; Restaurant services, including sit-down service of food and take-out restaurant services; Restaurant services, namely, providing of food and beverages for consumption on and off the premises; Restaurants featuring home delivery; Take-out restaurant services
The registered mark in U.S. Registration No. 4265943 is MIMOSA, in stylized form, for relevant use on:
Class 43: Bar services; Delicatessen services; Fast-food restaurant services; Restaurant and catering services; Restaurant reservation services; Restaurant services; Restaurant services featuring sushi; Restaurant services, including sit-down service of food and take-out restaurant services; Restaurant services, namely, providing of food and beverages for consumption on and off the premises; Restaurants featuring home delivery; Take-out restaurant services
Applicant did not provide a response to this refusal. Accordingly, for the reasons stated in the previous Office action, this refusal to register is continued and maintained.
Color Claim Requirement
In its response, applicant provided an amended drawing which shows the mark in color. However, the color claim does not identify all the colors in the drawing of the mark. Specifically, the following colors have been omitted: black, white, and red. A complete color claim must list all the colors appearing in the drawing of the mark. See 37 C.F.R. §2.52(b)(1); TMEP §§807.07(a) et seq. If black, white, and/or gray are not being claimed as a color feature of the mark, applicant must exclude these 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. TMEP §807.07(d).
Based on the foregoing requirements for a complete color claim, applicant must provide a color claim that references all of the colors appearing in the drawing of the mark. See 37 C.F.R. §2.52(b)(1); TMEP §§807.07(a) et seq.
The following color claim is suggested: “The colors blue, black, white, orange, and red are claimed as a feature of the mark.”
Applicant must address the following additional requirement.
Mark Description Requirement
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 stylized wording “MIMOSA” in blue with black outlining. The letter “I” appears as a Champagne flute with a white base and filled with orange liquid, with a red strawberry at the top, all outlined in black.
Response Guidelines
For this application to proceed further, applicant must explicitly address each refusal and/or requirement raised in this Office action. Specifically, applicant must:
If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register. Applicant may also have other options for responding to a refusal and should consider such options carefully. To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements. For more information and general tips on responding to USPTO Office actions, response options, and how to file a response online, see “Responding to Office Actions” on the USPTO’s website.
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 and the trademark will fail to register. See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a); TMEP §§718.01, 718.02. Additionally, the USTPO will not refund the application filing fee, which is a required processing fee. See 37 C.F.R. §§2.6(a)(1)(i)-(iv), 2.209(a); TMEP §405.04.
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).
Legal Counsel
Because of the legal technicalities and strict deadlines involved in the USPTO application process, applicant may wish to hire a private attorney specializing in trademark matters to represent applicant in this process and provide legal advice. Although the undersigned trademark examining attorney is permitted to help an applicant understand the contents of an Office action as well as the application process in general, no USPTO attorney or staff is permitted to give an applicant legal advice or statements about an applicant’s legal rights. TMEP §§705.02, 709.06.
For attorney referral information, applicant may consult the American Bar Association’s Consumers’ Guide to Legal Help, an attorney referral service of a state or local bar association, or a local telephone directory. The USPTO may not assist an applicant in the selection of a private attorney. 37 C.F.R. §2.11.
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 $125 per 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 or e-mail without incurring this additional fee.
/Elizabeth Shen/
Trademark Examining Attorney
Law Office 121
571-270-7111
elizabeth.shen@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.