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:  January 10, 2020

 

This Office action is in response to applicant’s communication filed on December 18, 2019.

 

The substitute specimen has been received and accepted.  The requirement for an acceptable specimen of use showing the mark in the same form as in the drawing is satisfied.

 

The disclaimer of only “TACO” made upon the examining attorney’s recommendation has been received.  This requirement, however, was incorrect and apologies are made to applicant for the misdirection by the examining attorney.  The language “DINELA” (in its correct form as “DINE LA”) does need to be disclaimed or a Section 2(f) claim of acquired distinctiveness as to “DINELA” needs to be asserted (as in the prior application Serial No. SN 87/680150, for the mark DINELA).  The following disclaimer requirement is issued, and instructions on asserting a Section 2(f) claim in part as to “DINELA” provided.

 

Disclaimer of Descriptive Language

 

Applicant must provide a disclaimer of the unregistrable part(s) of the applied-for mark even though the mark as a whole appears to be registrable.  See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a).  A disclaimer of an unregistrable part of a mark will not affect the mark’s appearance.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965).

 

In this case, applicant must disclaim the wording “DINE LA TACO” because it is not inherently distinctive.  These unregistrable term are merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services.  See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a). 

 

The term “DINE” indicates the field of the goods and services of others (dining).  “LA” indicates the geographical scope of the services.  “TACO” indicates the specific dining focus.  Please note that the disclaimer will not show “DINELA” as a single word, but as “DINE LA” as it would be understood if presented grammatically.

 

Applicant may respond to this issue by submitting a disclaimer in the following format: 

 

No claim is made to the exclusive right to use “DINE LA TACO” apart from the mark as shown. 

 

For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage. 

 

Section 2(f) Claim as to “DINELA”

 

If applicant believes that a portion of the mark has acquired distinctiveness, applicant may amend the application to add a claim of acquired distinctiveness as to that portion under Trademark Act Section 2(f).  See 15 U.S.C. §1052(f); TMEP §1212.02(f)(i).  Evidence in support of this claim may consist of one or more of the following:

 

(1)       Prior Registrations:  Applicant may claim ownership of one or more active prior registrations on the Principal Register of that portion of the mark for goods and/or services that are sufficiently similar to those named in the pending application.  TMEP §1212.02(f)(i); see 37 C.F.R. §2.41(a)(1).  Applicant may do so by submitting the following statement, if accurate:  “The wording “DINELA” in the mark has become distinctive of the goods and/or services as evidenced by the ownership of active U.S. Registration No(s). [provide, if applicable] on the Principal Register for the same mark for sufficiently similar goods and/or services.”  TMEP §1212.04(e).

 

(2)       Five Years’ Use:  Applicant may submit a verified statement that that portion of the mark has become distinctive of applicant’s goods and/or services through the applicant’s substantially exclusive and continuous use of the mark in commerce that the U.S. Congress may lawfully regulate for the five years before the date when the claim of distinctiveness is made.  TMEP §1212.02(f)(i); see 37 C.F.R. §2.41(a)(2).  Applicant may do so by submitting the following statement, if accurate:  “The wording “DINELA” in the mark has become distinctive of the goods and/or services through the applicant’s substantially exclusive and continuous use of the mark in commerce that the U.S. Congress may lawfully regulate for at least the five years immediately before the date of this statement.”  TMEP §1212.05(d).

 

(3)       Other Evidence:  Applicant may submit other evidence of acquired distinctiveness of that portion of the mark, which may include “advertising expenditures, sales success, length and exclusivity of use, unsolicited media coverage, and consumer studies (linking the name to a source).”  In re Change Wind Corp., 123 USPQ2d 1453, 1467 (TTAB 2017) (quoting In re Steelbuilding.com, 415 F.3d 1293, 1300, 75 USPQ2d 1420, 1424 (Fed. Cir. 2005)).  In addition to the evidence, applicant should submit the following statement, if accurate:  “The evidence shows that the wording “DINELA” in the mark has become distinctive of the goods and/or services.” 

 

Assistance

 

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. 

 

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

 

 

Jeri Fickes

/Jeri Fickes/

Trademark Examining Attorney

Law Office 107, USPTO

571/272-9157

jeri.fickes@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 January 10, 2020 for

U.S. Trademark Application Serial No. 88139105

 

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. 

 

 

Jeri Fickes

/Jeri Fickes/

Trademark Examining Attorney

Law Office 107, USPTO

571/272-9157

jeri.fickes@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 January 10, 2020, 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.”