Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

NONFINAL OFFICE ACTION

 

The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned.  Respond using the Trademark Electronic Application System (TEAS).  A link to the appropriate TEAS response form appears at the end of this Office action. 

 

 

Issue date:  August 27, 2019

 

 

 

           

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.  

 

This action responds to applicant’s Request for Reconsideration filed 01/11/2019 and applicant’s Petition to the Director filed 04/09/2019.  Applicant’s Request for Reconsideration proffered a disclaimer in the alternative which amounts to a NON-FINAL NEW ISSUE which is addressed in the refusal below.  The examining attorney sincerely apologizes for the delay in not raising this issue.  The refusal under Trademark Act Section 2(e)(2) is MAINTAINED AND CONTINUED.  Applicant must respond timely and completely to the issue(s) below. See 37 C.F.R. §2.64(a); TMEP §714.04.

 

MARK IS PRIMARILY GEOGRAPHICALLY DESCRIPTIVE – SECTION 2(e)(2) REFUSAL

Refusal of registration based on the applied-for mark being primarily geographically descriptive of the origin of applicant’s services is MAINTAINED AND CONTINUED.  Trademark Act Section 2(e)(2), 15 U.S.C. §1052(e)(2); see TMEP §§1210, 1210.01(a).

 

Applicant’s Disclaimer

Applicant’s disclaimer of the primarily geographically descriptive wording “LV” does not overcome this refusal because the design element in the mark, a circle, is a common geometric shape and the stylization of the wording creates no non-geographically descriptive commercial impression. 

 

Background designs in composite marks consisting of common geometric shapes, such as circles, ovals, squares, triangles, diamonds, and other geometric designs, are generally not regarded as marks for services absent a showing of distinctiveness in the design alone.  In re Anton/Bauer Inc., 7 USPQ2d 1380, 1381 (TTAB 1988) (citing In re Raytheon Co., 202 USPQ 317 (TTAB 1979)); TMEP §1202.11; see also Seabrook Foods, Inc. v. Bar-Well Foods Ltd., 568 F.2d 1342, 1344, 196 USPQ 289, 291 (C.C.P.A. 1977).  Most common geometric shapes, such as circles, ovals, triangles, diamonds, or stars, when used as a background for word or letter marks are not considered inherently distinctive.  See In re Benetton Grp. S.p.A., 48 USPQ2d 1214, 1216 (TTAB 1998).  As the Board explained,

 

The rationale . . . is that designs of this character have been so commonly employed as background devices for word marks that composite marks of this type create but a single commercial impression with the result that purchasers would normally utilize the word portions of the marks to identify and distinguish the goods sold thereunder . . . .

 

In re Wendy’s Int’l, Inc., 227 USPQ 884, 885 (TTAB 1985) (quoting Permatex Co. v. Cal. Tube Prods., Inc., 175 USPQ 764, 766 (TTAB 1972)).

 

Here, the design element in the applied for mark is a basic circle with the wording “LV” appearing on top of it.  Consumers would not view such a basic circle design as a trademark absent a showing of acquired distinctiveness in the design alone.

 

Similarly, stylized primarily geographically descriptive wording is registrable only if the stylization creates a commercial impression separate and apart from the impression made by the wording itself.  See In re Cordua Rests., Inc., 823 F.3d 594, 606, 118 USPQ2d 1632, 1639-40 (Fed. Cir. 2016); In re Northland Aluminum Prods., Inc., 777 F.2d 1556, 1561, 227 USPQ 961, 964 (Fed. Cir. 1985); TMEP §1209.03(w).  Common and ordinary lettering with minimal stylization, as in this case, is generally not sufficiently striking, unique, or distinctive as to make an impression on purchasers separate from the wording.  See In re Sadoru Grp., Ltd., 105 USPQ2d 1484, 1487 (TTAB 2012).  Here, the stylization in the lettering creates no separate commercial impression and merely consists of straight lines that follow the angles of the letters themselves.

 

For the foregoing reasons, a disclaimer of “LV” does not overcome the Trademark Act Section 2(e)(1) refusal and the refusal is therefore maintained and continued.

 

How to respond.  Click to file a response to this nonfinal Office action  

 

 

/SeanCrowley/

Examining Attorney

Law Office 116

U.S. Patent and Trademark Office

571.272.8851

sean.crowley@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on August 27, 2019 for

U.S. Trademark Application Serial No. 87580374

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/SeanCrowley/

Examining Attorney

Law Office 116

U.S. Patent and Trademark Office

571.272.8851

sean.crowley@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from August 27, 2019, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond.

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”