To: | Carroll Companies, Inc. (tmdocketing@wbd-us.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88020519 - PURELY PROTECTED - C66769 3003 |
Sent: | 8/2/2018 6:42:56 PM |
Sent As: | ECOM103@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88020519
MARK: PURELY PROTECTED
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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: Carroll Companies, Inc.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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PRIORITY 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: 8/2/2018
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.
DATABASE SEARCH: The trademark examining attorney has searched the USPTO’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
ISSUES APPLICANT MUST ADDRESS: On July 31, 2018, the trademark examining attorney and Tiffani D. Otey, Esq. discussed the issues below. Applicant must timely respond to these issues. See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §§708, 711.
Applicant must disclaim the wording “PROTECTED” because it merely describes an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services, and thus is an unregistrable component of the mark. See 15 U.S.C. §§1052(e)(1), 1056(a); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); TMEP §§1213, 1213.03(a).
The attached evidence from
shows that “protected leather implies that the leather has a topical, pigmented coating on the outer surface.” http://advleather.com/leathergrading.html. Therefore, the wording merely describes a feature of applicant’s goods and services; namely, leather goods that have been protected with a coating or protective substance.
An applicant may not claim exclusive rights to terms that others may need to use to describe their goods and/or services in the marketplace. See Dena Corp. v. Belvedere Int’l, Inc., 950 F.2d 1555, 1560, 21 USPQ2d 1047, 1051 (Fed. Cir. 1991); In re Aug. Storck KG, 218 USPQ 823, 825 (TTAB 1983). A disclaimer of unregistrable matter does not affect the appearance of the mark; that is, a disclaimer does not physically remove the disclaimed matter from the mark. See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 978, 144 USPQ 433, 433 (C.C.P.A. 1965); TMEP §1213.
If applicant does not provide the required disclaimer, the USPTO may refuse to register the entire mark. See In re Stereotaxis Inc., 429 F.3d 1039, 1040-41, 77 USPQ2d 1087, 1088-89 (Fed. Cir. 2005); TMEP §1213.01(b).
Applicant should submit a disclaimer in the following standardized format:
No claim is made to the exclusive right to use “PROTECTED” apart from the mark as shown.
For an overview of disclaimers and instructions on how to satisfy this disclaimer requirement online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/disclaimer.jsp.
Identification of Services Indefinite – Class 35 Only
Class 18
Class 18 is acceptable as written.
Class 24
Class 24 is acceptable as written.
Class 27
Class 27 is acceptable as written.
Class 35
The wording “wholesale” and “retail”, by themselves, do not specify any service in particular and is unacceptable as indefinite. Applicant must identify the services by their common commercial name (e.g. wholesale and retail store services).
Suggested Identifications
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
Applicant may adopt the following identification, if acceptable:
Class 18
Leather hides used for making handbags, wallets and jewelry; leather hides used in bookbinding
Class 24
Leather upholstery for furniture; leather upholstery for pillows; leather upholstery for bedding; leather upholstery for the automotive industry; leather upholstery for the aviation industry; leather upholstery for the marine industry; leather upholstery for the railroad and mass transit industry; leather upholstery for the hospitality industry
Class 27
Cowhide rugs, goatskin rugs, sheepskin rugs
Class 35
Wholesale store services featuring leather upholstery for furniture; wholesale store services featuring cowhide rugs, goatskin rugs, sheepskin rugs; wholesale and retail store services featuring leather scrap; wholesale and retail store services featuring leather hides
Assistance
/Daniel Stringer/
Trademark Examining Attorney
Law Office 103
571.272.8975
daniel.stringer@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.
Correspondence
Sent: Tue 7/31/2018 1:28 PM
Thank you for your email. I will need to contact my client about this and get back you.
Tiffani Otey
Sent from my iPhone
Tiffani Otey |
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On Jul 31, 2018, at 10:22 AM, Stringer, Daniel <Daniel.Stringer@USPTO.GOV> wrote:
Ms. Otey,
My name is Daniel Stringer and I am the trademark examining attorney assigned to review the above-referenced application.
The identification of services in Class 35 must be amended because “wholesale” and “retail”, by themselves, do not specify any service in particular (Classes 18, 24, and 27 are acceptable as written). Additionally, the word “PROTECTED” must be disclaimed as it is merely descriptive of a feature of the goods because “protected leather implies that the leather has a topical, pigmented coating on the outer surface.” http://advleather.com/leathergrading.html.
Please find below my proposed disclaimer and identification of services (proposed changes are note in bold):
Identification of Services Amendment – Class 35 Only
Class 35
wholesale store services featuring leather upholstery for furniture; wholesale store services featuring cowhide rugs, goatskin rugs, sheepskin rugs; wholesale and retail store services featuring leather scrap; wholesale and retail store services featuring leather hides
Disclaimer Required
No claim is made to the exclusive right to use “PROTECTED” apart from the mark as shown.
If the proposed amendments are acceptable, please respond to this email accepting the amendments by Wednesday, August 1, 2018 and I will memorialize the modifications in an examiner’s amendment. Upon receipt of your approval, no further action on your part will be required.
Should you have any further questions regarding the application, please feel free to email or call at the phone number listed below.
Best regards,
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Daniel Stringer
Trademark Examining Attorney
United States Patent and Trademark Office
Law Office 103
571.272.8975