To: | Marlins Teamco LLC (trademark@cll.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88195946 - MIAMI - N/A |
Sent: | 2/25/2019 8:39:47 PM |
Sent As: | ECOM101@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88195946
MARK: MIAMI
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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: Marlins Teamco LLC
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE 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: 2/25/2019
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.
SEARCH OF OFFICE RECORDS (Advisory)
The trademark examining attorney has searched the Office’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).
Applicant should note the following ground for refusal.
SECTION 2(e)(2) REFUSAL – PRIMARILY GEOGRAPHICALLY DESCRIPTIVE
A mark is primarily geographically descriptive when the following is demonstrated:
(1) The primary significance of the mark is a generally known geographic place or location;
(2) The goods and/or services for which applicant seeks registration originate in the geographic place identified in the mark; and
(3) Purchasers would be likely to make a goods-place or services-place association; that is, purchasers would be likely to believe that the goods and/or services originate in the geographic place identified in the mark.
TMEP §1210.01(a); see In re Societe Generale des Eaux Minerales de Vittel S.A., 824 F.2d 957, 959, 3 USPQ2d 1450, 1452 (Fed. Cir. 1987); In re Hollywood Lawyers Online, 110 USPQ2d 1852, 1853 (TTAB 2014).
The applicant has applied to register MIAMI (stylized) for: Paper goods and printed matter, namely, trading cards; posters; stickers; decals; temporary tattoos transfers; bumper stickers; score books; scorecards; printed baseball game programs; magazines and books featuring baseball; newsletters; brochures and pamphlets featuring baseball; dry erase writing boards and writing surfaces; writing pads; note paper; notebooks; binders; stationery-type portfolios; stationery folders; stationery sets, namely, writing paper, cards, and envelopes; commemorative envelopes; flip books; preprinted agenda organizers; clipboards; memo boards; scrapbooks; autograph books; baseball card albums; plastic baseball card holders; book covers; bookmarks; bookends; calendars; greeting cards; postcards; printed bank checkbooks; checkbook covers; collectible stamps; rubber stamps; ink stamps; commemorative stamps; paper pennants; gift wrapping paper; paper gift and party bags; paper party goods in the nature of paper party decorations; paper coasters; paper napkins; facial tissue; paper tablecloths; mounted and un-mounted photographs; photograph albums; lithographs; Christmas card holders; money clips; paperweights; letter openers; pens; pencils; pencil top ornaments; crayons, markers; non-electric erasers; pencil sharpeners; pencil cases; un-graduated rulers; paper ticket holders; non-metal lanyards for paper ticket holders sold as a unit specially adapted for holding paper tickets; art pictures; art prints; framed photographs; printed tickets; entry tickets
The primary significance of MIAMI is a geographic location, namely, a city and port in southeastern Florida. See attached dictionary definition. The goods for which applicant seeks registration originate in this geographic place or location as shown by applicant’s address. See TMEP §1210.03. Purchasers are likely to believe the originate in this geographic place or location because the goods are sold there as shown by applicant’s website which indicates that its merchandise can be purchased at the team store at the ballpark as well as the Miami International Airport. See TMEP §§1210.04 et seq.
The applied-for mark shows the wording in stylized lettering. Stylized descriptive or generic 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).
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration. If applicant chooses to respond to the refusal(s) to register, Applicant should note the following issue(s) and requirement(s) set forth below.
INFORMATION ABOUT GOODS/SERVICES REQUIRED
Applicant must provide a written explanation of the following for the record:
SUPPLEMENTAL REGISTER- Section 1(b) Application Not Eligible for Supplemental Register Until Acceptable Allegation of Use is Filed (Advisory)
Although an amendment to the Supplemental Register would normally be an appropriate response to a Section 2(e)(2) refusal, such a response is not appropriate in the present case. The instant application was filed under Trademark Act Section 1(b) and is not eligible for registration on the Supplemental Register until an acceptable amendment to allege use meeting the requirements of 37 C.F.R. §2.76 has been timely filed. 37 C.F.R. §2.47(d); TMEP §§816.02, 1102.03.
If applicant files an acceptable allegation of use and also amends to the Supplemental Register, the application effective filing date will be the date applicant met the minimum filing requirements under 37 C.F.R. §2.76(c) for an amendment to allege use. TMEP §§816.02, 1102.03; see 37 C.F.R. §2.75(b). In addition, the undersigned trademark examining attorney will conduct a new search of the USPTO records for conflicting marks based on the later application filing date. TMEP §§206.01, 1102.03.
Filing an AAU to Convert 1(b) Application to 1(a)
To amend an intent-to-use application under Trademark Act Section 1(b) to use in commerce, an applicant must file, prior to approval of the mark for publication, an acceptable amendment to allege use. See 15 U.S.C. §1051(c); 37 C.F.R. §2.76; TMEP §§806.01(b), 1103. An amendment to allege use must satisfy the following requirements:
(1) STATEMENTS: The following statements: “The applicant is the owner of the mark sought to be registered.” and “The applicant is using the mark in commerce on or in connection with all the goods/services in the application or notice of allowance, or as subsequently modified.”
(2) DATES OF FIRST USE: The date of first use of the mark anywhereon or in connection with the goods and/or services, and the date of first use of the mark in commerceas a trademark or service mark. See more information about dates of use.
(3) GOODS AND/OR SERVICES: The goods and/or services specified in the application.
(4) SPECIMEN: A specimen showing how applicant uses the mark in commerce for each class of goods and/or services for which use is being asserted. If a single specimen supports multiple classes, applicant should indicate which classes the specimen supports rather than providing multiple copies of the same specimen. See more information about specimens.
(5) FEE(S): A filing fee for each international class of goods and/or services for which use is being asserted (find current fee information).
(6) VERIFICATION: Verification of (1) through (4) above in an affidavit or signed declaration under 37 C.F.R. §2.20. See more information about verification.
See 37 C.F.R. §2.76(b); TMEP §1104.08.
An amendment to allege use may be filed online via the Trademark Electronic Application System (TEAS). Filing an amendment to allege use is not considered a response to an Office action. 37 C.F.R. §2.76(h); TMEP §1104. An applicant must file a separate response to any outstanding Office action. TMEP §1104; see 37 C.F.R. §2.76(h).
Benefits of Supplemental Registration
Although registration on the Supplemental Register does not afford all the benefits of registration on the Principal Register, it does provide the following advantages to the registrant:
(1) Use of the registration symbol ® with the registered mark in connection with the designated goods and/or services, which provides public notice of the registration and potentially deters third parties from using confusingly similar marks.
(2) Inclusion of the registered mark in the USPTO’s database of registered and pending marks, which will (a) make it easier for third parties to find it in trademark search reports, (b) provide public notice of the registration, and thus (c) potentially deter third parties from using confusingly similar marks.
(3) Use of the registration by a USPTO trademark examining attorney as a bar to registering confusingly similar marks in applications filed by third parties.
(4) Use of the registration as a basis to bring suit for trademark infringement in federal court, which, although more costly than state court, means judges with more trademark experience, often faster adjudications, and the opportunity to seek an injunction, actual damages, and attorneys’ fees and costs.
(5) Use of the registration as a filing basis for a trademark application for registration in certain foreign countries, in accordance with international treaties.
See 15 U.S.C. §§1052(d), 1091, 1094; J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition §§19:33, 19:37 (rev. 4th ed. Supp. 2017).
IDENTIFICATION AND CLASSIFICATION
Applicant has provided the following identification and classification of goods and/ or services in its application:
Class 16: Paper goods and printed matter, namely, trading cards; posters; stickers; decals; temporary tattoos transfers; bumper stickers; score books; scorecards; printed baseball game programs; magazines and books featuring baseball; newsletters; brochures and pamphlets featuring baseball; dry erase writing boards and writing surfaces; writing pads; note paper; notebooks; binders; stationery-type portfolios; stationery folders; stationery sets, namely, writing paper, cards, and envelopes; commemorative envelopes; flip books; preprinted agenda organizers; clipboards; memo boards; scrapbooks; autograph books; baseball card albums; plastic baseball card holders; book covers; bookmarks; bookends; calendars; greeting cards; postcards; printed bank checkbooks; checkbook covers; collectible stamps; rubber stamps; ink stamps; commemorative stamps; paper pennants; gift wrapping paper; paper gift and party bags; paper party goods in the nature of paper party decorations; paper coasters; paper napkins; facial tissue; paper tablecloths; mounted and un-mounted photographs; photograph albums; lithographs; Christmas card holders; money clips; paperweights; letter openers; pens; pencils; pencil top ornaments; crayons, markers; non-electric erasers; pencil sharpeners; pencil cases; un-graduated rulers; paper ticket holders; non-metal lanyards for paper ticket holders sold as a unit specially adapted for holding paper tickets; art pictures; art prints; framed photographs; printed tickets; entry tickets
The wording shown above in bolded text in the identification of goods is unacceptable as indefinite because it is too broad and could include goods in other international classes, specifically, "Paper goods and printed matter, namely, trading cards," "printed baseball game programs," "newsletters," "Christmas card holders," "paper ticket holders" must be clarified. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. For instance, trading cards could include trading cards for games in class 28 as well as trading cards, other than for games in class 16. Applicant must amend the identification to specify the common commercial or generic name of the goods. See TMEP §1402.01. If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses. See id.
As for “newsletters,” applicant must indicate the literary subject matter of the newsletters, e.g., newsletters featuring baseball. TMEP §§1402.03(e), 1402.07(b).
Descriptions of goods and/or services found acceptable in earlier-filed applications and registrations do not always remain acceptable when adopted in later-filed applications. See TMEP §§702.03(a)(iv), 1402.14. Identifications of goods and/or services are examined in accordance with the Trademark Rules of Practice and the USPTO’s policies and procedures in effect on the date an application is filed (although an applicant may voluntarily choose to follow policies and procedures adopted after the application was filed). See 37 C.F.R. §2.85(e)(1)-(e)(2); TMEP §§1401.09, 1402.14. The USPTO’s rules and policies with respect to identifications of goods and/or services are updated periodically to reflect changes in the marketplace and technology as well as changes to the international classification system. See TMEP §1402.14. For guidance on drafting acceptable identifications of goods and/or services, use the USPTO’s online U.S. Acceptable Identification of Goods and Services Manual (ID Manual), which is continually updated in accordance with prevailing rules and policies. See TMEP §1402.04.
Applicant may adopt the following identification, if accurate:
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.
MULTIPLE – CLASS APPLICATION REQUIREMENTS
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule). The application identifies goods and/or services that are classified in at least 2 classes; however, applicant submitted a fee(s) sufficient for only 1 class(es). Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
See an overview of the requirements for multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
CLOSING
If applicant has questions regarding the legal issues in this Office action, please telephone or e-mail the assigned trademark examining attorney. For all other matters, including filing questions, status inquiries and general questions, please contact the Trademark Assistance Center at (800) 786-9199.
/Benji Paradewelai/
Trademark Attorney
Law Office 101
U.S. Patent & Trademark Office
Tel: (571) 272-1658
Email: benji.paradewelai@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.