To: | AIRBOT CO.,LTD (iplaw_mark@hotmail.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 87164205 - OMNIBUS - N/A |
Sent: | 7/14/2017 3:01:18 PM |
Sent As: | ECOM106@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 87164205
MARK: OMNIBUS
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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: AIRBOT CO.,LTD
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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: 7/14/2017
This new non-final Office action is in response to applicant’s communication filed on 5/25/2017.
In a previous Office action dated 12/14/2016, registration was refused based upon the following: failure to show the applied-for mark in use in commerce due to an unacceptable specimen. In addition, the trademark examining attorney required applicant to satisfy the following requirement: provide additional information about the specimen. Lastly, applicant was made aware of the mark in pending U.S. Application Serial No. 87125180 and advised that if the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks.
Based on applicant’s response, the following refusal has been obviated: failure to show the applied-for mark in use in commerce due to an unacceptable specimen.
In addition, the following requirement has been withdrawn: provide additional information about the specimen.
However, the advisory regarding the potential Section 2(d) refusal based upon likelihood of confusion with the mark in U.S. Application Serial No. 87125180 is maintained and continued.
In addition, upon further review of the application, the examining attorney now raises the following additional issue: partial Trademark Act Section 2(e)(1) refusal based upon the mark being merely descriptive of particular goods in applicant’s identification. The examining attorney apologizes for any inconvenience caused by the failure to raise this issue in the original Office action.
PARTIAL SECTION 2(e)(1) REFUSAL – MERELY DESCRIPTIVE
THIS PARTIAL REFUSAL APPLIES ONLY TO THE GOODS SPECIFIED THEREIN
The stated refusal refers to the following goods and does not bar registration for the other goods: “Children's educational toys for developing fine motor, cognitive, counting skills; Electronic action toys; Toy cars.”
Applicant has applied to register the mark OMNIBUS (in stylized form) for, in relevant part, “Children's educational toys for developing fine motor, cognitive, counting skills; Electronic action toys; Toy cars” in International Class 28.
The attached Internet dictionary evidence from http://www.ahdictionary.com/word/search.html?q=omnibus shows that the term OMNIBUS refers to “a long motor vehicle for passengers; a bus.” Applicant’s goods consist of children’s educational toys, electronic action toys and toy cars. When considered in connection with these goods, the mark immediately indicates to consumers that the goods consist of toy omnibuses (i.e. toy buses).
In fact, the attached Internet evidence from the following websites shows that it is common for toy manufacturers to use the term OMNIBUS to describe a feature or characteristic of toys:
Thus, consumers are accustomed to seeing the term OMNIBUS used to describe a feature or characteristic of toys as opposed to the source of the toys. In sum, applicant’s mark is merely descriptive because consumers are likely to view the mark as describing a feature or characteristic of applicant’s goods rather than the source of the goods. Accordingly, registration is refused pursuant to Section 2(e)(1) of the Trademark Act.
(1) Deleting the goods to which the refusal pertains; or
(2) Filing a request to divide out the goods that have not been refused registration, so that the mark may proceed toward publication for opposition for those goods to which the refusal does not pertain. See 37 C.F.R. §2.87. See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide). If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to all outstanding issues in this Office action, including the refusal. 37 C.F.R. §2.87(e).
PRIOR-FILED APPLICATION
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
For this application to proceed further, applicant must explicitly address each refusal and/or requirement raised in this Office action. 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 specified in this Office action for responding to a refusal and should consider those 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 USPTO 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.
When an application has abandoned for failure to respond to an Office action, an applicant may timely file a 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. The petition must be filed within two months of the date of issuance of the notice of abandonment and may be filed online via the Trademark Electronic Application System (TEAS) with a $100 fee. See 37 C.F.R. §§2.6(a)(15)(ii), 2.66(b)(1).
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.
/J. Evan Mucha/
Examining Attorney
Law Office 106
(571) 270-1989
evan.mucha@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.