Notation to File

NOTE TO THE FILE

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SERIAL NUMBER:            88240885

DATE:                                03/19/2019

NAME:                               tbrown4

NOTE:         

Email to attorney.

From: Brown, Tina
Sent: Tuesday, March 19, 2019 12:05 PM
To: 'ip@bertholdtypes.com' <ip@bertholdtypes.com>
Subject: U.S. TRADEMARK APPLICATION SERIAL NOS. 88240684, 88240689, 88240821, 88240822, 88240830, 88240833, 88240841 & 88240885 - MIKAWAY, GALATHEA, MAINORM, POST-ANTIQUA, SCHNEIDER-ANTIQUA, SAYER ESPRIT, MARBROOK & CITY

 

Dear Ms. Hunt,

 

I am the USPTO attorney currently examining the applications listed in the subject line above.  I have completed the searches of the Office records.  However, I am unable to approve these applications because of the reason indicated below.  With your authorization, I can delete the unnecessary statement from the applications by Examiner’s Amendment.  Then, I will be able to approve these applications.  Please respond by Friday, March 22, 2019.  Thank you.

 

UNNECESSARY SECTION 2(f) CLAIM OF ACQUIRED DISTINCTIVENESS

 

Applicant claims that the entire applied-for mark has acquired distinctiveness under Trademark Act Section 2(f); however, the mark appears to be inherently distinctive and is eligible for registration on the Principal Register without proof of acquired distinctiveness.  See 15 U.S.C. §1052(f); TMEP §1212.02(d).  As this Section 2(f) claim appears to be unnecessary, applicant has the option to withdraw this claim.  See TMEP §1212.02(d).

 

Applicant may withdraw this claim by instructing the trademark examining attorney to delete it from the application record.  See id.  If applicant does not withdraw the claim, it will remain in the application record and be printed on the registration certificate.  See TMEP §1212.10.

 

A claim of acquired distinctiveness may be construed as a concession by applicant that the entire applied-for mark is not inherently distinctive.  See Cold War Museum, Inc. v. Cold War Air Museum, Inc., 586 F.3d 1352, 1358, 92 USPQ2d 1626, 1629 (Fed. Cir. 2009) (citing Yamaha Int’l Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 1577, 6 USPQ2d 1001, 1005 (Fed. Cir. 1988)); TMEP §1212.02(b).

 

Best regards,

 

/Tina Brown/

Trademark Examining Attorney

Law Office 118

T: 571-272-8864

E: tina.brown@uspto.gov

 

 

         Sent to TICRS as Serial Number: 88240684
         Sent to TICRS as Serial Number: 88240689
         Sent to TICRS as Serial Number: 88240821
         Sent to TICRS as Serial Number: 88240822
         Sent to TICRS as Serial Number: 88240830
         Sent to TICRS as Serial Number: 88240833
         Sent to TICRS as Serial Number: 88240841