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: 6/3/2019

 

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 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 RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and 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 RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.  

 

INTRODUCTION

 

This non-final Office action is in response to the applicant’s Response to Office Action filed on May 24, 2019.

 

In the initial Office action of December 4, 2018, the Office issued a Section 2(e)(4) primarily merely a surname refusal and required the applicant to amend the identification of goods and services and clarify the number of classes for which it seeks registration.

 

The applicant responded by SATISFYING the requirement that it clarify the number of classes for which it seeks registration and by claiming acquired distinctiveness under Section 2(f) in order to obviate the Section 2(e)(4) refusal, which has created a NEW ISSUE for the reasons set forth below.  Additionally, the Section 2(e)(4) refusal is MAINTAINED AND CONTINUED.  Additionally, though the applicant amended the identification of goods and services, the requirement that the applicant amend the identification of goods and services is MAINTAINED AND CONTINUED for the brief reasons set forth below. 

 

SUMMARY OF ISSUES

 

The applicant must address:

 

• Section 2(f) Claim of Acquired Distinctiveness Insufficient – NEW ISSUE;
• Section 2(e)(4) Refusal – Primarily Merely a Surname – MAINTAINED AND CONTINUED; and
• Identification of Goods and Services Amendment Required – MAINTAINED AND CONTINUED.

 

SECTION 2(f) CLAIM OF ACQUIRED DISTINCTIVENESS INSUFFICIENT –

NEW ISSUE

 

The applicant has claimed acquired distinctiveness based on ownership of prior registrations and five-years’ use.

 

Regarding the applicant’s claim based on ownership of prior registrations, this claim is insufficient because the goods and services at issue differ.  Per TMEP §1212.09(b),

[I]f the relevant portion of the mark has been used with related, as opposed to identical, goods or services, the applicant must additionally show, by submission of relevant evidence, a sufficient relationship between the goods or services in connection with which the mark has acquired distinctiveness and the goods or services recited in the intent-to-use application to warrant the conclusion that the previously created distinctiveness will transfer to the related goods or services when use in commerce begins. In re Rogers, 53 USPQ2d 1741, 1745 (TTAB 1999); see TMEP §1212.09(a).

The goods and services at issue are not completely identical to the goods identified in the prior registrations.  Thus, the applicant must provide evidence showing a sufficient relationship between the goods and services in the application and the goods in the prior registration.

 

As to the applicant’s five-years’ use statement, the applicant only indicated that the wording HEMMINGS has acquired distinctiveness, but the statement fails to address, per TMEP §1212.09(b), that the relevant portion of the mark has acquired distinctiveness “with the same or related goods or services.” 

 

Lastly, though the applicant references that it “currently operates a service station in Bennington, Vermont,” the Office is unsure why this information was proffered.  If the applicant offered this information to claim “actual evidence of acquired distinctiveness of the relevant portion of the mark with respect to the same or related goods or services”, TMEP §1212.09(b), photographs of one service station do not meet this standard.

 

SECTION 2(e)(4) REFUSAL – PRIMARILY MERELY A SURNAME –

MAINTAINED AND CONTINUED

 

For the reasons stated and evidence provided in the initial Office action, which are incorporated herein by reference, the Section 2(e)(4) primarily merely a surname refusal is MAINTAINED AND CONTINUED.

 

IDENTIFICATION OF GOODS AND SERVICES AMENDMENT REQUIRED – MAINTAINED AND CONTINUED

 

For the reasons stated in the initial Office action, which are incorporated herein by referenced, the requirement that the applicant amend the identification of goods and services is MAINTAINED AND CONTINUED.

 

Though the applicant’s amendment to Class 16 is acceptable, the following clauses in Classes 35 and Class 41 are unacceptable:

 

• “automotive events in the nature of tradeshows, exhibits and auctions.”  The applicant must specify the nature of the automotive exhibits as discussed in the initial Office action, and the nature of the automotive exhibits determines classification.
• “arranging, organizing and conducting events relating to motor vehicles, namely, tradeshows}, auctions, exhibits.”  The applicant must delete the bracket.  Additionally, the applicant must specify the nature of the motor vehicle exhibits as discussed in the initial Office action, and the nature of the motor vehicle exhibits determines classification.
• “Providing current event information in the fields of motor vehicles, cars, motorcycles, aviation, marine vessels, trucks, 4x4 trucks, classic and antique cars, automotive parts and accessories, and automotive events in the nature of automobile races, exhibits, auctions, tradeshows.”  It is unclear whether “automotive events in the nature of automobile races, exhibits, auctions, tradeshows” is subsumed under the general category of “Providing current event information.”  Assuming it is not, the applicant is required to insert a semi-colon after “Accessories”, and delete “, and”.  Additionally, the applicant must specify the nature of the automotive exhibits as discussed in the initial Office action, and the nature of the automotive exhibits determines classification.  Moreover, “auctions, tradeshows” belong in Class 35.
• “arranging, organizing and conducting events relating to motor vehicles, namely, automobile races, exhibits, auctions, tradeshows.”  The applicant must specify the nature of the motor vehicles exhibits as discussed in the initial Office action, and the nature of the motor vehicles exhibits determines classification.  Moreover, “auctions, tradeshows” belong in Class 35.

 

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 and requirements 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.

 

/Kevin G. Crennan/

Trademark Examining Attorney

Law Office 113

(571) 272-7949

kevin.crennan@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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 6/3/2019 FOR U.S. APPLICATION SERIAL NO. 88127006

 

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 6/3/2019 (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.