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.  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: 4/10/2019

 

INTRODUCTION

 

This Office action is supplemental to and supersedes the previous Office action issued on October 03, 2018 in connection with this application.  Based on information and/or documentation in applicant’s response, the trademark examining attorney now issues the following new requirement(s)/refusal(s)/requirement(s) and refusal(s):  Section 2(f) Acquired Distinctiveness – Intent to Use Advisory; Information About Section 2(f) Acquired Distinctiveness Claim – Required.  See TMEP §§706, 711.02. 

 

In a previous Office action(s) dated October 03, 2018, the trademark issued the following:

 

• NEW ISSUE: Information About Applicant – Required
• CONTINUED & MAINTAINED: Section 2(d) Refusal – Likelihood of Confusion
• CONTINUED & MAINTAINED: Section 2(e)(4) Refusal – Primarily Merely A Surname
• CONTINUED & MAINTAINED: Potential Response Options to Section2(e)(4) Refusal – Advisory

 

Based on applicant’s response, the trademark examining attorney notes that the following requirement(s) have been satisfied:  Information About Applicant – Required.  See TMEP §713.02. 

 

Further, applicant filed assignments in the 2(d) matters; thus, the following refusal(s) and/or requirement(s) have been withdrawn:  Section 2(d) Refusal – Likelihood of Confusion.  See id. 

 

However, applicant filed a Section 2(f) in part claim in this intent to use matter based on evidence of five years use and prior registrations in order to attempt to obviate the surname refusal. These claims are not appropriate at this time because (1) the mark consists only of one word, thus ANY Section 2(f) claim would pertain to the entire mark, not “2(f) in part.” Further, applicant’s matter is intent to use basis and thus, cannot claim Section 2(f) at this time for the reasons discussed below.

 

The following is a SUMMARY OF ISSUES that applicant must address:

 

• NEW ISSUE: Information About Section 2(f) Acquired Distinctiveness Claim – Required
• NEW ISSUE: Section 2(f) Acquired Distinctiveness – Intent to Use Advisory
• CONTINUED & MAINTAINED: Section 2(e)(4) Refusal – Primarily Merely A Surname

 

Applicant must respond to all issues raised in this Office action and the previous Office action, within six (6) months of the date of issuance of this Office action.  37 C.F.R. §2.62(a); see TMEP §711.02.  If applicant does not respond within this time limit, the application will be abandoned.  37 C.F.R. §2.65(a).

 

 

NEW ISSUE: INFORMATION ABOUT SECTION 2(f) ACQUIRED DISTINCTIVENESS CLAIM – REQUIRED

 

The examining attorney notes that applicant claimed Section 2(f) in part, although such a claim/limitation is unnecessary because the entire applied-for mark merely consists of a one word literal element and thus does not have any design elements or other wording to dissect the claim from. Further, assuming applicant means to file a Section 2(f) claim in its entirely, based on applicant’s use of the mark in commerce with applicant’s goods and/or services for five years prior to filing the application, such a claim is improper at this time.  See 15 U.S.C. §1052(f).  Specifically, the application indicates that the mark is not currently in use but will be used by applicant in the future (intent to use basis 1(b)).  Thus, applicant needs to clarify whether applicant intends to claim acquired distinctiveness in his or her application or if applicant inadvertently included this claim of five years’ use.  See 37 C.F.R. §2.61(b); TMEP §814. 

 

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. 

 

 

NEW ISSUE: SECTION 2(f) ACQUIRED DISTINCTIVENESS – INTENT TO USE ADVISORY

 

As discussed above, 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 Trademark Act 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).

 

The Trademark Trial and Appeal Board has set forth the following two requirements for showing that a mark in an intent-to-use application has acquired distinctiveness:

 

(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).

 

 

CONTINUED & MAINTAINED: SECTION 2(e)(4) REFUSAL – PRIMARILY MERELY A SURNAME

 

For the reasons discussed in the February 22, 2018 and continued and maintained in the October 03, 2018 Office Actions, applicant’s mark is considered primarily a surname. Further, in the March 20, 2019 applicant attempts to obviate the refusal based on a Section 2(f) in part claim. While a Section 2(f) claim could be an appropriate response to this refusal, applicant mistakenly claimed it “in part” and also did not fulfill the requirements that a such a claim necessitates in an “intent to use” application. Thus, until applicant can produce or demonstrate acquired distinctiveness for the intent to use matter this Section 2(e)(4) refusal is herein continued and maintained.

 

 

RESPONSE GUIDELINES

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

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.  

 

 

 

/Courtney M. Caliendo/

Courtney M. Caliendo

Trademark Examining Attorney

Law Office 121 - USPTO

Courtney.Caliendo@uspto.gov

571-270-1871

 

 

 

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 4/10/2019 FOR U.S. APPLICATION SERIAL NO. 87670916

 

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 4/10/2019 (or sooner if specified in the Office action).  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.  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 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.