UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

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

 

 

 

OFFICE 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: 11/21/2016

 

 

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 or e-mail without incurring this additional fee.   

 

 

INTRODUCTION

 

This responds to the applicant’s submission of November 17, 2016 in response to an Office action issued November 2, 2016 wherein the examining attorney required a disclaimer or a Section 2(f) claim, in part, as to SUMMERVILLE. The applicant submitted a Section 2(f) claim as to the whole mark, rather than only as to the word SUMMERVILLE.  This Section 2(f) claim is unacceptable. Since this issue is being raised for the first time, the requirements below are not made final.

 

 

SECTION 2(f) CLAIM IN PART

 

The design components of this mark render the entire mark registrable on the Principal Register. Only the term SUMMERVILLE is geographically descriptive.  Therefore, the Section 2(f) claim should be made “in part,” as to the term SUMMERVILLE. As this Section 2(f) claim in full appears to be unnecessary, applicant has the option to withdraw this claim.  See TMEP §1212.02(d).

 

Applicant may withdraw this claim by instructing the trademark examining attorney to delete it from the application record, and amend it to the claim in part outlined below.  See id.  If applicant does not withdraw the claim, it will remain in the application record and be printed on the registration certificate.  See TMEP §1212.10.

 

A claim of acquired distinctiveness may be construed as a concession by applicant that the entire applied-for mark is not inherently distinctive.  See Cold War Museum, Inc. v. Cold War Air Museum, Inc., 586 F.3d 1352, 1358, 92 USPQ2d 1626, 1629 (Fed. Cir. 2009) (citing Yamaha Int’l Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 1577, 6 USPQ2d 1001, 1005 (Fed. Cir. 1988)); TMEP §1212.02(b).

 

 

In the previous Office action, the examining attorney provided the following instructions as to the Section 2(f) claim, with the relevant portions repeated below:

 

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), instead of submitting a disclaimer.  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. Since the applicant has been using the mark in commerce for at least five years, option (2) appears to apply here:

 

(2)       Five Years’ Use:  Applicant may submit a verified statement that that portion of the mark has become distinctive of applicant’s goods and/or services through the applicant’s substantially exclusive and continuous use of the mark in commerce that the U.S. Congress may lawfully regulate for the five years before the date when the claim of distinctiveness is made.  TMEP §1212.02(f)(i); see 37 C.F.R. §2.41(a)(2).  Applicant may do so by submitting the following statement, if accurate:  “The word “SUMMERVILLE” in the mark has become distinctive of the goods and/or services through the applicant’s substantially exclusive and continuous use of the mark in commerce that the U.S. Congress may lawfully regulate for at least the five years immediately before the date of this statement.”  TMEP §1212.05(d).

Applicant may submit the required verified statement under 37 C.F.R. §§2.33 and 2.34 and/or a properly worded declaration under 37 C.F.R. §2.20 using the online Trademark Electronic Application System (TEAS) response to Office action form.  See 37 C.F.R. §§2.33(a)-(b), 2.34(a)(1)(i), (a)(2), (a)(3)(i), (a)(4)(ii), 2.193(a)-(e)(1); TMEP §§611.01(c), 804.01(b).  In the TEAS response form, answer “yes” to wizard question #10, and follow the instructions within the form for signing.  The TEAS online form will require two signatures:  one in the “Declaration Signature” section and one in the “Response Signature” section.  For more information about a verified statement or declaration and how to provide them using TEAS, please go to http://www.gov.uspto.report/trademark/laws-regulations/verified-statement

 

Therefore, the Section 2(f) claim should be amended to the following, if accurate:

 

The word “SUMMERVILLE” in the mark has become distinctive of the goods and/or services through the applicant’s substantially exclusive and continuous use of the mark in commerce that the U.S. Congress may lawfully regulate for at least the five years immediately before the date of this statement.

 

 

The USPTO applies the following legal authorities when processing a trademark and/or service mark application: 

 

• The Trademark Act of 1946, as amended
• The Trademark Rules of Practice, as amended
• Precedential court and Trademark Trial and Appeal Board decisions
• The USPTO’s Trademark Manual of Examining Procedure (TMEP), as periodically updated
• The USPTO’s Trademark Trial and Appeal Board Manual of Procedure (TBMP), as periodically updated 

 

See 15 U.S.C. §§1051 et seq.; 37 C.F.R. pts. 2, 3, 6, 7, 11; TMEP intro., §§101, 107, 110. 

 

Official USPTO letters and notices sent to applicants generally refer to one or more of these legal resources.  Both the Trademark Act and Trademark Rules of Practice can be viewed online at http://www.gov.uspto.report/trademarks/law/index.jsp.  The TMEP is available online at http://www.gov.uspto.report/trademarks/resources/index.jsp and the TBMP and Trademark Trial and Appeal Board decisions are available online at http://www.gov.uspto.report/trademarks/process/appeal/index.jsp.

 

 

 

/Elissa Garber Kon/

Examining Attorney, Law Office 106

phone:  571-272-9181

email:  elissagarber.kon@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 11/21/2016 FOR U.S. APPLICATION SERIAL NO. 87112508

 

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 11/21/2016 (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.