To: | Stewart, Michael (jdh@jerryhayneslegal.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88215794 - (M.S.F.P.) SYSTEM - N/A |
Sent: | 3/12/2019 7:22:16 AM |
Sent As: | ECOM123@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88215794
MARK: (M.S.F.P.) SYSTEM
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CORRESPONDENT ADDRESS: LAW OFFICE OF JERRY D HAYNES PA7 |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Stewart, Michael
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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: 3/12/2019
SEARCH OF OFFICE’S DATABASE OF 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).
SUMMARY OF ISSUES
Disclaimer required
In this case, applicant must disclaim the wording “SYSTEM” because it is not inherently distinctive. These unregistrable term(s) at best 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 attached third-party registrations demonstrate disclaimers of this wording on registrations for goods and services similar to applicants. See U.S. Registration Nos 5242361, 5154271, 4728856, 4275712, and 4062640. Third-party registrations featuring goods and/or services the same as or similar to applicant’s goods and/or services are probative evidence on the issue of descriptiveness where the relevant word or term is disclaimed, registered under Trademark Act Section 2(f) based on acquired distinctiveness, or registered on the Supplemental Register. E.g., In re Morinaga Nyugyo Kabushiki Kaisha, 120 USPQ2d 1738, 1745 (TTAB 2016) (quoting Inst. Nat’l des Appellations D’Origine v. Vintners Int’l Co., 958 F.2d 1574, 1581-82, 22 USPQ2d 1190, 1196 (Fed. Cir. 1992)); In re Box Solutions Corp., 79 USPQ2d 1953, 1955 (TTAB 2006).
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “SYSTEM” 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.
Amended mark description and color claim required
The drawing shows the applied-for mark in various colors, including black, white and/or gray; however, the color claim and description of the mark do not reference the colors black, white and/or gray. The color claim and description must be complete and reference all the colors in the mark. See 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §§807.07(a) et seq. Therefore, applicant must clarify whether black, white and/or gray are used as colors in the mark or to indicate background, outlining, shading, and/or transparent areas. TMEP §807.07(d); see 37 C.F.R. §2.61(b).
To clarify how black, white and/or gray are being used in the mark, applicant may satisfy one of the following:
(1) If black, white and/or gray are a feature of the mark, applicant must amend the color claim to include them and amend the description to identify where black, white and/or gray appear in the literal and/or design elements of the mark. The following color claim and description are suggested, if accurate:
Color claim: The colors yellow, blue and white are claimed as a feature of the mark.
Description: The mark consists of the literal element “(M.S.F.P.) SYSTEMS” in yellow on a circular background of blue and white resembling ocean waves.
(2) If black, white and/or gray are not a feature of the mark, applicant must amend the description to state that black, white, and/or gray represent background, outlining, shading and/or transparent areas and are not part of the mark. Even if applicant is not claiming white as a feature of the mark, applicant must amend the color claim to remove extraneous wording. TMEP §807.07(a)(i)-(ii). The following are suggested, if accurate:
Color claim: The colors yellow and are claimed as a feature of the mark.
Description: The mark consists of the literal element “(M.S.F.P.) SYSTEMS” in yellow on a circular blue background with a pattern resembling ocean waves. The color white represents background only and is not claimed as a feature of the mark.
RESPONSE GUIDELINES
For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
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.
Turner, Jessica (Lauren)
/J Lauren Turner/
Trademark Examining Attorney
Law Office 123
(571) 272-9890
Jessica.Turner1@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.