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: 3/6/2019

 

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.  

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

Search Results / No Conflicting Marks

 

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).

 

Telephone Response Suggested

 

Applicant is highly encouraged to call or email the assigned trademark examining attorney below to resolve the issues in this Office action.  Although the USPTO will not accept an email as a response to an Office action, an applicant can communicate by phone or email to agree to a proposed amendment to the application that will immediately place the application in condition for publication, registration, or suspension.  See 37 C.F.R. §2.62(c); TMEP §707.

 

Summary of Issues

 

The following is a summary of issues:

 

(1)  Amended Description of the Mark Required

(2)  Disclaimer of THE DESIGN OF FIVE BUGLES Required

 

 

Amended Description of the Mark Required

 

Applicant must submit an amended description of the mark.  37 C.F.R. §2.37; see TMEP §§808.01, 808.02.  Applications for marks not in standard characters must include an accurate and concise description of the entire mark that identifies all the literal and design elements.  See 37 C.F.R. §2.37; TMEP §§808 et seq.  In this case, the drawing of the mark is not in standard characters.

 

The following description is suggested, if accurate: 

 

            The mark consists of a shield with the letters "CFO" over a star comprised of five crossed bugles.

 

Disclaimer Required

 

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 design of THE FIVE CROSSED BUGLES because it is not inherently distinctive.  This unregistrable design at best is 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), (c). 

 

A design and the word or words which describe the design are legal equivalents; therefore, a design must be disclaimed the same as descriptive wording.  In re Eight Ball, Inc., 217 USPQ 1183, 1184 (TTAB 1983); TMEP §1213.03(c).

 

The design of THE FIVE CROSSED BUGLES is the legal equivalent of the wording “Chief/Commissioner” as used in connection with a fire fighter’s rank or position.  The attached evidence from Wikipedia (http://en.wikipedia.org/wiki/Firefighter) shows this wording “Chief/Commissioner” means/is commonly used in connection with similar goods and/or services to mean the highest ranked in the department.  Thus, the design and its legally equivalent wording merely describes applicant’s goods and/or services because the Applicant’s certification is designed to recognize those Chiefs and highly ranked professional in the area of firefighting. 

 

Also, http://www.fireserviceinfo.com/ranks.html (see attached) describes how “In the early days, of North American fire departments, orders were given to the troops, by officers, through the use of a large brass device that resembles a megaphone. These were very ornate brass horns. They were commonly called “bugles” or speaking trumpets.” And “The person with the bugle hanging from his neck or shoulder was easily identified as the person in charge. Officers became identified with these objects so a small pin in the shape of a bugle became a type of rank insignia for officers. The more “bugles on his collar” the higher the rank. An expression still used today.”

 

Also, http://en.m.wikipedia.org/wiki/Firefighting_in_the_United_States (see attached) describes:

 

Ranks and Insignia

 

There is no single standard system of rank insignia in use, but certain ranks are common. Many variations in insignia systems make use of the voice trumpet, a type of megaphone, and frequently referred to as a "bugle."

 

Firefighter (occasionally private) is the lowest rank. Often, it may be subdivided into grades (such as 1st class, senior, or master firefighter - typically awarded based on seniority), which may or may not be marked on the individual's badge or by uniform rank insignia.

 

…

 

Captain is used in most departments, usually being denoted with a pair of parallel bugles or parallel bars, connected by a thin cross-bar, in either silver or gold. This is frequently used as a senior supervisor of an individual company or station, and sometimes oversees multiple lieutenants, in addition to firefighters. In Philadelphia, for example, a captain of a ladder company is the commanding officer of that firehouse, and the captain of the engine company supervises the medic unit in the station. Although only working on 1 of 4 shifts as the company officer, the captain is the supervising officer of the house overall and is reported to by the lieutenants on the other 3 shifts, even though he/she is not present during those shifts. As with lieutenant, some departments still use the older style, Foreman, instead of captain.

 

…

 

§  Chief is usually the highest rank of a uniformed member in any given department, traditionally shown with 5 gold bugles or 5 stars.

See attached.

 

The Applicant’s certification (per the application attached to the original trademark application) is to certify those who are Chiefs and demonstrating the “highest rank” (and highly caliber).

 

Articles from the online Wikipedia® encyclopedia may be used to support a refusal or requirement, provided that an applicant has an opportunity to rebut such evidence.  See In re Hinton, 116 USPQ2d 1051, 1053 n.10 (TTAB 2015); TBMP §1208.03; TMEP §710.01(b).

 

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

 

No claim is made to the exclusive right to use THE DESIGN OF THE FIVE CROSSED BUGLES 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.

 

 

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

/Gina M. Fink/

Trademark Examining Attorney

Law Office 109

571-272-9275

gina.fink@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 3/6/2019 FOR U.S. APPLICATION SERIAL NO. 88210913

 

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 3/6/2019 (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.