To: | Blount, Inc. (chiipmail@gtlaw.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 87129285 - OREGON - 135133.01050 |
Sent: | 7/8/2017 3:38:44 PM |
Sent As: | ECOM112@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 87129285
MARK: OREGON
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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: Blount, 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. 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: 7/8/2017
This letter responds to applicant’s communication filed on 5/2/2017. Questions regarding the Office Action should be directed to the trademark examining attorney at kyle.peete@uspto.gov.
The following refusal is maintained:
Section 2(f) Claim – Registration Cancelled
Registration No. 3850871 is cancelled. A claim of acquired distinctiveness under Trademark Act Section 2(f) may not be based on a registration that is cancelled or expired. 37 C.F.R. §2.41(a)(1); In re Koninklijke Philips Elecs. N.V., 112 USPQ2d 1177, 1186 (TTAB 2014) (citing In re BankAmerica Corp., 229 USPQ 852, 853 (TTAB 1986)); TMEP §1212.04(d).
Section 2(f) Claim Clarification
If applicant intends to maintain this claim, applicant must satisfy the requirements specified in the following paragraph. See TMEP §1212.09(a)-(b). If applicant does not intend to maintain this claim, applicant should request the Section 2(f) claim be deleted from the application. See TMEP §1212.09(a).
An intent-to-use applicant who has used the same mark on related goods and/or services may assert a claim of acquired distinctiveness under Section 2(f) before filing an allegation of use, if applicant can establish that, as a result of applicant’s use of the same mark on other goods and/or services, the mark has become distinctive of the goods and/or services in the intent-to-use application, and that this previously created distinctiveness will transfer to the goods and/or services in the intent-to-use application when use in commerce begins. In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1347, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001); In re Binion, 93 USPQ2d 1531, 1538 (TTAB 2009); TMEP §1212.09(a).
Failure to comply with this request for information can be grounds for refusing registration. In re AOP LLC, 107 USPQ2d 1644, 1651 (TTAB 2013); In re DTI P’ship LLP, 67 USPQ2d 1699, 1701 (TTAB 2003); TMEP §814.
(1) Applicant must establish that the same mark has acquired distinctiveness as to the other goods and/or services, by submitting evidence such as ownership of an active prior registration for the same mark for sufficiently similar or related goods and/or services, a prima facie showing of acquired distinctiveness based on five years’ use of the same mark with related goods and/or services, or actual evidence of acquired distinctiveness for the same mark with respect to the other goods and/or services; and
(2) Applicant must show sufficient relatedness of the goods and/or services in the intent-to-use application and those for which the mark has acquired distinctiveness to warrant the conclusion that the previously created distinctiveness will transfer to the goods and/or services in the application upon use. The showing necessary to establish relatedness will be decided on a case-by-case basis and will depend upon the nature of the goods and/or services involved and the language used to identify them in the application.
TMEP §1212.09(a); see Kellogg Co. v. Gen. Mills Inc., 82 USPQ2d 1766, 1770-71 (TTAB 2007); In re Rogers, 53 USPQ2d 1741, 1744-45 (TTAB 1999).
Although an applicant’s ownership of one or more active prior registrations of the same mark may be sufficient for a prima facie showing of acquired distinctiveness, the prior registration(s) must be for sufficiently similar or related goods and/or services such that distinctiveness will transfer to the goods and/or services in the application. See 37 C.F.R. §2.41(a)(1); In re Rogers, 53 USPQ2d 1741, 1744 (TTAB 1999) (citing Levi Strauss & Co. v. Genesco, Inc., 742 F.2d 1401, 1405, 222 USPQ 939, 942 (Fed. Cir. 1984)); TMEP §§1212.04, 1212.04(c).
Therefore, applicant must submit evidence and an explanation as to how the goods and/or services in the claimed active prior registration(s) are similar or related to the goods and/or services in the application such that distinctiveness will transfer to the goods and/or services in the application. See 37 C.F.R. §2.61(b); Bausch & Lomb, Inc. v. Leupold & Stevens, Inc., 6 USPQ2d 1475, 1477-78 (TTAB 1988); TMEP §1212.04(c).
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.
/Kyle Christopher Peete/
Trademark Attorney [Law Office 112]
(571) 272-8275 (Phone)
(571) 273-8275 (Fax)
kyle.peete@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.