To: | Sterling International Inc. (efiling@cojk.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88232111 - DISPOSABLE FLY TRAP ADD WATER. - STIL-2-58793 |
Sent: | 3/20/2019 7:16:10 PM |
Sent As: | ECOM104@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88232111
MARK: DISPOSABLE FLY TRAP ADD WATER.
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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: Sterling International Inc.
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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: 3/20/2019
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’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).
ISSUE REGARDING APPLICANT’S ENTITY TYPE
If applicant’s legal entity is an individual, applicant must so specify and provide his or her national citizenship. TMEP §803.03(a).
If applicant is a corporation, association, partnership, joint venture, or the foreign equivalent, applicant must so specify and provide the U.S. state or foreign country under whose laws applicant is organized or incorporated. TMEP §803.04. For a U.S. partnership or joint venture, applicant must also list the names, legal entities and national citizenship or the U.S. state or foreign country of organization or incorporation of all the general partners or joint venturers. TMEP §803.03(b)-(c). For an association, applicant must also specify whether the association is incorporated or unincorporated. TMEP §803.03(c).
In this case, applicant must disclaim the wording “DISPOSABLE” and “FLY TRAP” because it is not inherently distinctive. These unregistrable term(s) at best are merely descriptive, or misdescriptive, 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 evidence from merriam-webster.com shows this wording means, respectively, “designed to be used once or only a limited number of times and then thrown away” and “a trap for catching flies often having the form of a wire or glass cylinder with a conical cover and bottom in which is a small opening.” Thus, the wording merely describes, or misdescribes, applicant’s goods because they are in the nature of traps for catching flies and pesticides which are designed to be used once or only a limited number of times.
In addition, applicant must disclaim the design of the fly 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). In addition, see the enclosed excerpts from Wikipedia.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “DISPOSABLE” and “FLY TRAP” and the design of the fly 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.
A complete color claim must reference all the colors appearing in the drawing of the mark. See 37 C.F.R. §2.52(b)(1); TMEP §§807.07(a) et seq. Similarly, a complete description of a mark depicted in color must specify where the colors appear in the literal and design elements of the mark. See 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §§807.07(a) et seq. If black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark, applicant must so specify in the description. See TMEP §807.07(d).
The following color claim and description are suggested, if accurate:
Color claim: “The colors green, yellow green, gray, black, red and white are claimed as a feature of the mark.”
Description: “The mark consists of the following:
adesign applied to the front and back of the goods each contained within a black rectangle. The front in the lower half is divided by a green arch separating a yellow
green field from a gray field that includes white lighter gray squares in the background. The yellow green field is stippled with fine white dots.
The stippling does not indicate color. Over the gray squares are the words in black with "disposable" in black above
the words "fly trap," in larger black font with gray and black edging, over the words "add water. subtract flies." in black. Above the "p" in "trap" is a stylized image of a black, white and green fly with red eyes. In the upper half above the gray
and green field is a cross hatch design consisting of black squares against a white background. At the top of the image is a half circle with three images of black a scissors. The top half of the image of the back of the back label is a mirror image of the front cross hatch design. The lower half of the back image
shows a centered gray field containing an illustration with black and white images numbered in light green 1 through 8 illustrating instructions on use of
the goods that includes scissors, hands, and water pitcher.”
/Barney L. Charlon/
Trademark Examining Attorney
Law Office 104
(571) 272-9141
(571) 272-9104 (fax)
barney.charlon@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.