To: | Elite Garden Wholesale (lvelez@rppmh.com) |
Subject: | U.S. Trademark Application Serial No. 88246045 - ELITE - N/A |
Sent: | February 04, 2020 04:23:48 PM |
Sent As: | ecom125@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88246045
Mark: ELITE
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Correspondence Address: REICKER, PFAU, PYLE & MCROY LLP
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Applicant: Elite Garden Wholesale
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Reference/Docket No. N/A
Correspondence Email Address: |
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NONFINAL OFFICE ACTION
The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: February 04, 2020
This non-final Office action is in response to applicant’s communication filed on December 17, 2019.
In a previous Office action dated March 26, 2019, the trademark examining attorney refused registration of the applied-for mark based on failure to show the applied-for mark in use in commerce with any of the specified goods and being a merely ornamental feature on the goods. In addition, applicant was required to provide information about the specimens, amend the Class 25 identification of goods and mark description.
Based on applicant’s response, the trademark examining attorney notes that the identification of goods and mark description requirements have been satisfied. See TMEP §713.02.
However, the substitute specimens fail to show the applied-for mark used in a non-ornamental manner or match the mark as shown in the mark drawing. In addition, due to new USPTO rules and procedures, applicant is required to provide its domicile address for the record.
The following is a SUMMARY OF ISSUES that applicant must address:
APPLICANT’S DOMICILE ADDRESS REQUIRED – NEW ISSUE
An individual applicant’s domicile is the place a person resides and intends to be the person’s principal home. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. A juristic entity’s domicile is the principal place of business, i.e. headquarters, where a juristic entity applicant’s senior executives or officers ordinarily direct and control the entity’s activities. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. An applicant whose domicile is located outside of the United States or its territories is foreign-domiciled and must be represented at the USPTO by a U.S.-licensed attorney qualified to practice before the USPTO under 37 C.F.R. §11.14. 37 C.F.R. §2.11(a).
The application record lists applicant as a juristic entity and specifies applicant’s domicile as a post office box instead of a street address. In most cases, a post office box is not acceptable as a domicile address because it does not identify the location of applicant’s headquarters where the entity’s senior executives or officers ordinarily direct and control the entity’s activities. See37 C.F.R. §§2.2(o)-(p), 2.189; Examination Guide 4-19, at I.A.3. Thus, applicant must provide its domicile street address. See 37 C.F.R. §2.189. Alternatively, an applicant may demonstrate that the listed address is, in fact, the applicant’s domicile. Examination Guide 4-19, at I.A.3.
ORNAMENTAL REFUSAL – CONTINUED AND MAINTAINED
The size, location, dominance, and significance of the alleged mark as used on the goods are all relevant factors in determining the commercial impression of the applied-for mark. See, e.g., In re Peace Love World Live, LLC, 127 USPQ2d 1400, 1403 (TTAB 2018) (quoting In re Hulting, 107 USPQ2d 1175, 1178 (TTAB 2013)); In re Lululemon Athletica Can. Inc., 105 USPQ2d at 1687 (quoting In re Right-On Co., 87 USPQ2d 1152, 1156 (TTAB 2008)); TMEP §1202.03(a).
With respect to clothing, consumers may recognize small designs or discrete wording as trademarks, rather than as merely ornamental features, when located, for example, on the pocket or breast area of a shirt. See TMEP §1202.03(a). Consumers may not, however, perceive larger designs or slogans as trademarks when such matter is prominently displayed across the front of a t-shirt. See In re Pro-Line Corp., 28 USPQ2d at 1142; In re Dimitri’s Inc., 9 USPQ2d 1666, 1667-68 (TTAB 1988); TMEP §1202.03(a), (b), (f)(i), (f)(ii).
In this case, the submitted specimen shows the applied-for mark located directly on the upper-center area of the front of the shirt and the front portion of the hat, where ornamental elements often appear. See TMEP §1202.03(a), (b). Furthermore, the mark is displayed in a relatively large size on the clothing such that it dominates the overall appearance of the goods. Lastly, the applied-for mark appears to be a design element that is used in a merely decorative manner that would be perceived by consumers as having little or no particular source-identifying significance.
Therefore, consumers would view the applied-for mark as a decorative or ornamental feature of the goods, rather than as a trademark to indicate the source of applicant’s goods and to distinguish them from others.
In appropriate circumstances, applicant may overcome this refusal by satisfying one of the following options:
(1) Submit a different specimen (a verified “substitute” specimen) that was in actual use in commerce at least as early as the filing date of the application and that shows proper trademark use for the identified goods in International Class 25. Examples of acceptable specimens that show non-ornamental use on clothing include hang tags and labels used inside a garment.
(2) Amend to the Supplemental Register, which is a second trademark register for marks not yet eligible for registration on the Principal Register, but which may become capable over time of functioning as source indicators.
(3) Claim acquired distinctiveness under Trademark Act Section 2(f) by submitting evidence that the applied-for mark has become distinctive of applicant’s goods; that is, proof that applicant’s extensive use and promotion of the mark allowed consumers now directly to associate the mark with applicant as the source of the goods.
(4) Submit evidence that the applied-for mark is an indicator of secondary source; that is, proof that the mark is already recognized as a source indicator for other goods or services that applicant sells/offers.
(5) Amend the filing basis to intent to use under Section 1(b). This option will later necessitate additional fee(s) and filing requirements.
For an overview of the response options above and instructions on how to satisfy each option online using the Trademark Electronic Application System (TEAS) form, see the Ornamental Refusal webpage.
Applicant should note the following additional ground for refusal.
SPECIMEN REFUSAL – CONTINUED AND MAINTAINED
Registration is refused because the webpage specimen does not show the mark in the drawing in use in commerce in International Class 25, which is required in the application. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a), 1301.04(g)(i). The mark appearing on the specimen and in the drawing must match; that is, the mark in the drawing “must be a substantially exact representation of the mark” on the specimen. See 37 C.F.R. §2.51(a)-(b); TMEP §807.12(a).
In this case, the webpage specimen displays the mark as the stylized wording “ELITE”. However, the drawing displays the mark as the stylized wording “ELITE” below a stylized design of a bear. The mark on the specimen does not match the mark in the drawing because the website specimen omits entirely the large bear design prominently featured in the mark drawing. Applicant has thus failed to provide the required evidence of use of the mark in commerce. See TMEP §807.12(a).
Applicant may respond to this refusal by satisfying one of the following:
(1) Submit a different specimen (a verified “substitute” specimen) for each applicable international class that (a) shows the mark in the drawing in actual use in commerce for the goods in the application, and (b) was in actual use in commerce at least as early as the filing date of the application.
Examples of specimens for goods include tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, and displays associated with the actual goods at their point of sale. See TMEP §§904.03 et seq. Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods. TMEP §904.03(i).
(2) Submit a request to amend the filing basis to intent to use under Section 1(b), for which no specimen is required. This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.
The USPTO will not accept an amended drawing submitted in response to this refusal because the changes would materially alter the drawing of the mark in the original application or as previously acceptably amended. See 37 C.F.R. §2.72(a)-(b); TMEP §807.14. Specifically, amending the mark drawing to omit the bear would remove a large, prominent portion of the applied-for mark, require a new search of the USPTO’s database of marks, and would thus constitute an impermissible material alteration of the applied-for mark.
For more information about drawings and instructions on how to satisfy these response options online using the Trademark Electronic Application System (TEAS) form, see the Drawing webpage.
How to respond. Click to file a response to this nonfinal Office action.
Justin Miller
/Justin Miller/
Trademark Examining Attorney Law Office 125
(571) 272-6040
justin.miller@uspto.gov
RESPONSE GUIDANCE