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: 5/2/2019

 

 

This Office action is in response to applicant’s communication filed on April 8, 2019.

 

This Office action is supplemental to and supersedes the previous Office action issued on March 26, 2019 in connection with this application.  Based on information in applicant’s response, the trademark examining attorney now issues the following new refusal: Trademark Act Section 2(d) for a likelihood of confusion with a registered mark.  See TMEP §§706, 711.02.  Applicant is also advised of a prior-filed application that may also raise a Section 2(d) refusal.

 

The trademark examining attorney maintains and continues the refusals and requirements raised in the March 26, 2019 office action (restated below).

 

The following is a SUMMARY OF ISSUES that applicant must address:

• NEW ISSUE: Prior-filed Application
• NEW ISSUE: Section 2(d) Refusal – Likelihood of Confusion
• Section 2(e)(2) Refusal – Primarily Geographically Descriptive
• Information about Goods Required
• Identification of Goods – Amendment Unacceptable
• Multiple-Class Application Requirements

 

 

Applicant must respond to all issues raised in this Office action and the previous March 26, 2019 Office action, within six (6) months of the date of issuance of this Office action.  37 C.F.R. §2.62(a); see TMEP §711.02.  If applicant does not respond within this time limit, the application will be abandoned.  37 C.F.R. §2.65(a).

 

PRIOR-FILED APPLICATION

 

The filing date of pending U.S. Application Serial No. 87468287 precedes applicant’s filing date.  See attached referenced application.  If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application.

 

In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application.  Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in the table below.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registration information.

 

Applicant’s mark is ALPINE LEATHER GOODS (in standard character form) for “Hand Made Leather items and other. Dry Goods. Examples - Clothing items. Outdoor/Camping Goods. Etc.” in International Class 18.

 

The registered marks are:

 

Mark	Registration No.	Goods at Issue
ALPINE	4956329 (in standard character form)	International Class 13: “Belts, bags, pouches and belt sleeves adapted for ammunition”
ALPINE ATTACK	1984136 (typed drawing)	International Class 18: “backpacks, frame packs, day packs, and belt or fanny packs”
ALPINE DESIGN	2747925 (typed drawing)	International Class 18: “backpacks”
ALPINE DIVISION	5067278 (in standard character form)	International Class 18: “All-purpose carrying bags”
ALPINE MODERN	4981276 (in standard character form)	International Class 18: “travel bags”
ALPINE MODERN	5169223 (in standard character form)	International Class 25: in relevant part, “belts”
ALPINE MOUNTAIN GEAR	4860351 (in standard character form)	International Class 18: “Backpacks”
ALPINE ORIGIN MERINO	4239484 (in standard character form)	International Class 18: in relevant part, “Leather and raw skins, imitation leather; leather bags; whips; harnesses and saddlery”
ALPINE OUTFITTERS	4835578 (in special form)	International Class 18: “Harnesses; Dog collars; Dog leashes; Dog sled lines in the nature of reins; Dog jackets; Dog vests; Dog packs; Dog booties”
ALPINE OUTFITTERS	4835580 (in standard character form)	International Class 18: “Harnesses; Dog collars; Dog leashes; Dog sled lines in the nature of reins; Dog jackets; Dog vests; Dog packs; Dog booties”
ALPINE RIVERS	5122373 (in special form)	International Class 18: “Credit card holders; Travel bags; Travel cases; Waist packs”
ALPINE SUMMIT	5250611 (in standard character form)	International Class 18: in relevant part, “backpacks”
ALPINE SWISS	4195726 (in standard character form)	International Class 18: “Briefcases; Leather bags and wallets”
ALPINE SWISS	5062336 (in special form)	International Class 18: “Attache cases; Backpacks; Briefcases; Business card cases; Cases for keys; Handbags; Messenger bags; Purses; Toiletry bags sold empty; Toiletry cases sold empty; Wallets.”
ALPINE SWISS	5169230 (in special form)	International Class 18: “Backpacks; Briefcases; Briefcases and attache cases; Business card cases; Cases for keys; Handbags; Messenger bags; Purses; Toiletry bags sold empty; Toiletry cases sold empty; Wallets”   International Class 25: “Belts; Money belts”
ALPINE SWISS	5062335 (in special form)	International Class 25: “Belts; Money belts”

 

 

Standard for Likelihood of Confusion

 

Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties.  See 15 U.S.C. §1052(d).  Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”).  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017).  Only those factors that are “relevant and of record” need be considered.  M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018). 

 

Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis:  (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services.  See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.

 

Similarity of the Marks

 

Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression.  Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v).  “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.”  In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)); TMEP §1207.01(b).

 

When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.”  Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b).  The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks.  In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (CCPA 1971)); TMEP §1207.01(b).

 

In this case, the marks create substantially similar commercial impressions because they are comprised of the identical dominant word ALPINE.

 

Specifically, the marks are similar in appearance in that they include the identical word ALPINE. With respect to the “ALPINE” mark in registration No. 4956329, applicant has incorporated the entirety of the registrant’s mark in its own mark.  Incorporating the entirety of one mark within another does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d).  See Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 1022, 194 USPQ 419, 422 (C.C.P.A. 1977) (finding CALIFORNIA CONCEPT and surfer design and CONCEPT confusingly similar); Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL LANCER and design and BENGAL confusingly similar); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (finding BARR GROUP and BARR confusingly similar); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1090 (TTAB 2016) (finding JAWS DEVOUR YOUR HUNGER and JAWS confusingly similar); TMEP §1207.01(b)(iii).  In the present case, the marks are identical in part.

 

With respect to the other marks which are comprised of “ALPINE” and additional wording, confusion is likely because the marks are identical as to “ALPINE”, the first and dominant portion of the marks.  Consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark.  See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (finding similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876, 23 USPQ2d 1698, 1700 (Fed Cir. 1992) (finding similarity between CENTURY 21 and CENTURY LIFE OF AMERICA in part because “consumers must first notice th[e] identical lead word”); see also In re Detroit Athletic Co., 903 F.3d 1297, 1303, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”).

 

The likelihood of confusion is not obviated even though the marks are comprised of additional wording that is not shared in common.  To begin with, some of the marks and applicant’s mark combine “ALPINE” with descriptive wording.  For example, “DESIGN”, “MODERN”, “MOUNTAIN GEAR”, and “OUTFITTERS” has been disclaimed in the registered marks.  In addition, an advisory to disclaim “LEATHER GOODS” in the applied-for mark is noted below.  Disclaimed matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant when comparing marks.  In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).  As such, the wording “ALPINE” is rendered the more dominant element of the marks.

 

Other marks combine “ALPINE” with additional wording, such as “ATTACK”, “DIVISION”, “ORIGIN MERINO”, “RIVERS”, “SUMMIT”, and “SWISS”.  However, this additional wording is insufficient to differentiate applicant’s mark because the wording reinforces the commercial impression and connotation of “Alpine”, that is, relating to the Alps or high mountains.  See attached dictionary definition from the American Heritage Dictionary. 

 

Lastly, the likelihood of confusion is not obviated even though some of the marks are in special form featuring stylized wording and/or a design.  Here, applicant’s mark is in standard character form and has the potential to be stylized in a manner similar to the registered marks.  A mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition.  See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii).  Thus, a mark presented in stylized characters and/or with a design element generally will not avoid likelihood of confusion with a mark in typed or standard characters because the word portion could be presented in the same manner of display.  See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”).  Moreover, the design elements in the registered marks reinforce the connotation of “ALPINE”, or the Alps and high mountains, and thus do not create a distinct commercial impression.

 

Overall, the marks are identical to “ALPINE”.  Thus, the marks are confusingly similar.

 

Relatedness of the Goods

 

In a likelihood of confusion determination, the goods and/or services are compared to determine whether they are similar, commercially related, or travel in the same trade channels.  See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).

 

Determining likelihood of confusion is based on the description of the goods and/or services stated in the application and registration at issue, not on extrinsic evidence of actual use.  See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).  

 

In this case, the application uses broad wording to describe “Hand Made Leather items and other. Dry Goods. Examples - Clothing items. Outdoor/Camping Goods. Etc.”.  This wording presumably encompasses all goods of the type described, including the more narrow goods featured in the registrations.  See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015).  For example, the mark in registration No. 4956329 includes belts, bags, pouches and belt sleeves adapted for ammunition in International Class 13, all of which are encompassed by the wording handmade leather items.  See attached evidence from Amazon.com.  Similarly, the registrations featuring goods in International Classes 18 and 25 include items that can be considered goods that are hand made from leather, for example, duffle bags, tote bags, backpacks, card wallets, all-purpose bags, dog leashes and harnesses, belts, money belts, fanny packs, saddlery, and whips.  See attached evidence.  Thus, the goods in the application and registrations are legally identical.  See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).

 

Additionally, the goods of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.”  In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)).  Thus, applicant’s and registrant’s goods are related.

 

In sum, upon encountering the similar marks of the applicant and registrant on the closely related goods concerned in this case, consumers are likely to be confused and mistakenly believe that the respective goods emanate from a common source or are connected in some way.  Based on this likelihood of source confusion, registration is refused under Section 2(d) of the Trademark Act.

 

Applicant should note the following additional ground for refusal.

 

SECTION 2(e)(2) REFUSAL – PRIMARILY GEOGRAPHICALLY DESCRIPTIVE

 

Registration is refused because the applied-for mark is primarily geographically descriptive of the origin of applicant’s goods.  Trademark Act Section 2(e)(2), 15 U.S.C. §1052(e)(2); see TMEP §§1210, 1210.01(a).

 

Section 2(e)(2) of the Trademark Act prohibits the registration of a mark which, when used on or in connection with the goods or services of an applicant, is primarily geographically descriptive of them.  A mark is primarily geographically descriptive when the following is demonstrated:

 

(1) The primary significance of the mark is a generally known geographic place or location;

 

(2) The goods and/or services for which applicant seeks registration originate in the geographic place identified in the mark; and

 

(3) Purchasers would be likely to make a goods-place or services-place association; that is, purchasers would be likely to believe that the goods and/or services originate in the geographic place identified in the mark.

 

TMEP §1210.01(a); see In re Societe Generale des Eaux Minerales de Vittel S.A., 824 F.2d 957, 959, 3 USPQ2d 1450, 1452 (Fed. Cir. 1987); In re Hollywood Lawyers Online, 110 USPQ2d 1852, 1853 (TTAB 2014).

 

In this case, applicant has applied to register the mark “ALPINE LEATHER GOODS” for the following goods: “Hand Made Leather items and other. Dry Goods. Examples - Clothing items. Outdoor/Camping Goods. Etc.”

 

Turning to the first factor in the test set forth above, the primary significance of “ALPINE” is a geographic location, namely, a city in San Diego County, California.  See previously attached encyclopedic evidence from The Columbia Gazetteer and evidence from Wikipedia establishing that ALPINE is a geographic location.

 

With regard to the second factor in the test set forth above, the goods for which the applicant seeks registration originate in the geographic place identified in the mark, ALPINE. 

 

Goods are considered to originate from a geographic location when the record shows that the goods are sold there, manufactured or produced there, packaged and shipped from there, and/or contain a main ingredient or component derived from there.  See In re JT Tobacconists, 59 USPQ2d 1080, 1083 (TTAB 2001) (holding applicant’s cigars, cigar cases, and humidors originated from MINNESOTA because they were packaged and shipped from MINNESOTA, and applicant’s business was located in MINNESOTA); TMEP §1210.03.

 

Here, the application indicates applicant’s address is in Alpine, California.  Further, the previously attached screenshots from applicant’s Facebook page indicate the goods are made in Alpine, California.  For example, a post dated February 4, 2019 states “It has been leather prototype headquarters in the shop” and the location is tagged as “Alpine, California”.  As such, the record shows that the goods for which applicant seeks registration originate in “ALPINE”.

 

With regard to the third factor in the test set forth above, since applicant is located in Alpine, California, and produces its goods in Alpine, California, consumers will have a reasonable basis to believe that the applicant’s goods originate from this geographic place.  To establish a services-place association, the examining attorney must only show a “reasonable basis” for concluding that the public is likely to believe that the mark identifies the place from which the services originate.  In re Loew's Theatres, Inc., 226 USPQ 865 (Fed. Cir. 1985).

 

Lastly, the geographic significance of the applied-for mark is not lessened even though it includes the additional wording “LEATHER GOODS”.  The addition of generic or highly descriptive wording to a geographic word or term does not diminish that geographic word or term’s primary geographic significance.  TMEP §1210.02(c)(ii); see, e.g., In re Hollywood Lawyers Online, 110 USPQ2d 1852, 1853-54 (TTAB 2014) (holding HOLLYWOOD LAWYERS ONLINE primarily geographically descriptive of attorney referrals, online business information, and an online business directory); In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1920 (TTAB 2008) (holding NORMANDIE CAMEMBERT primarily geographically descriptive of cheese).

 

Here, the application indicates the goods are leather items, or leather goods.  Further, the previously attached third-party registrations show the descriptive nature of this wording.  Third-party registrations featuring goods the same as or similar to applicant’s goods 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).  See attached third-party registrations. 

 

Applicant’s Arguments:

 

Applicant’s arguments have been considered and found unpersuasive.  For example, applicant contends that the proposed mark is not primarily geographically descriptive because the images and designs used on its goods feature themes of trees and mountains.  However, while “Alpine” may be suggestive of mountains and the Alps, the previously attached evidence, as discussed above, establishes that “ALPINE” is also the name of the place from where applicant’s goods originate.

In sum, the foregoing considerations result in the determination that the applied-for mark is primarily geographically descriptive.  Therefore, registration is refused under Section 2(e)(2) of the Trademark Act.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusals by submitting evidence and arguments in support of registration.

 

ADVISORY - Response Option: Applicant may amend to the Supplemental Register after filing an acceptable Amendment to Allege Use

 

Although an amendment to the Supplemental Register would normally be an appropriate response to this refusal, such a response is not appropriate in the present case.  The instant application was filed under Trademark Act Section 1(b) and is not eligible for registration on the Supplemental Register until an acceptable amendment to allege use meeting the requirements of 37 C.F.R. §2.76 has been timely filed.  37 C.F.R. §2.47(d); TMEP §§816.02, 1102.03.

 

If applicant files an acceptable allegation of use and also amends to the Supplemental Register, the application effective filing date will be the date applicant met the minimum filing requirements under 37 C.F.R. §2.76(c) for an amendment to allege use.  TMEP §§816.02, 1102.03; see 37 C.F.R. §2.75(b).  In addition, the undersigned trademark examining attorney will conduct a new search of the USPTO records for conflicting marks based on the later application filing date.  TMEP §§206.01, 1102.03.

 

ADVISORY: Disclaimer will be required on Supplemental Register

 

Applicant is advised that, if the application is amended to seek registration on the Supplemental Register, applicant will be required to disclaim “LEATHER GOODS” because such wording appears to be generic in the context of applicant’s goods.  See 15 U.S.C. §1056(a); In re Wella Corp., 565 F.2d 143, 144, 196 USPQ 7, 8 (C.C.P.A. 1977); In re Creative Goldsmiths of Wash., Inc., 229 USPQ 766, 768 (TTAB 1986); TMEP §1213.03(b).

 

Applicant may submit a disclaimer in the following format:

 

No claim is made to the exclusive right to use “LEATHER GOODS” apart from the mark as shown.

 

TMEP §1213.08(a)(i).

 

For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.

 

Applicant must also respond to the requirements set forth below.

 

REQUEST FOR INFORMATION ABOUT THE GOODS

 

Applicant must provide a written statement explaining whether the goods are manufactured, packaged, shipped from, sold in or have any other connection with the geographic location named in the mark.  See 37 C.F.R. §2.61(b); TMEP §§814, 1210.03. 

 

Failure to comply with a request for information is grounds for refusing registration.  In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814. 

 

IDENTIFICATION OF GOODS – AMENDMENT UNACCEPTABLE

 

The proposed amendment to the identification is not acceptable because it exceeds the scope of the identification in the application.  See 37 C.F.R. §§2.32(a)(6), 2.71(a); TMEP §§805, 1402.06 et seq., 1402.07.  Applicant’s goods may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, the original identification in the application, and any previously accepted amendments, remain operative for purposes of future amendment.  See 37 C.F.R. §2.71(a); TMEP §1402.07(d).

 

In this case, the application originally identified the goods as follows:  “Hand Made Leather items and other. Dry Goods. Examples - Clothing items. Outdoor/Camping Goods. Etc.”

 

However, the proposed amendment identifies the following goods: “leather”.

 

This proposed amendment is beyond the scope of the original identification because the original identification identifies handmade leather items while the proposed amendment identifies leather, a material from which goods are made.  

 

As noted in the prior Office action, the following is an example of wording the applicant may substitute for the Identification of Goods in International Class 18, if accurate:

 

leather handbags; leather key cases; leather wallets; leather purses; leather leashes

 

For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

 

SCOPE ADVISORY:  Applicant may amend the identification to clarify or limit the goods, but not to broaden or expand the goods beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods may not later be reinserted.  See TMEP §1402.07(e).

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

As noted in the prior Office action, the application identifies goods in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(1)       List the goods by their international class number in consecutive numerical order, starting with the lowest numbered class.

 

(2)       Submit a filing fee for each international class not covered by the fee already paid (view the USPTO’s current fee schedule).  The application identifies goods that are classified in at least nine classes; however, applicant submitted a fee sufficient for only one class.  Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

LEGAL ASSISTANCE ADVISORY

 

Because of the legal technicalities and strict deadlines involved in the USPTO application process, applicant may wish to hire a private attorney specializing in trademark matters to represent applicant in this process and provide legal advice.  Although the undersigned trademark examining attorney is permitted to help an applicant understand the contents of an Office action as well as the application process in general, no USPTO attorney or staff is permitted to give an applicant legal advice or statements about an applicant’s legal rights.  TMEP §§705.02, 709.06. 

 

For attorney referral information, applicant may consult the American Bar Association’s Consumers’ Guide to Legal Help; an online directory of legal professionals, such as FindLaw®; or a local telephone directory.  The USPTO, however, may not assist an applicant in the selection of a private attorney.  37 C.F.R. §2.11.

 

RESPONDING TO THIS OFFICE ACTION

 

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.

 

ADVISORY – TEAS PLUS AND TEAS RF REQUIREMENTS

 

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.  

 

 

 

/Luz Adorno/

Trademark Examining Attorney, Law Office 111

United States Patent and Trademark Office

(571) 272-4902

Luz.Adorno@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 5/2/2019 FOR U.S. APPLICATION SERIAL NO. 88255858

 

Your trademark application has been reviewed.  The trademark examining attorney assigned by the USPTO to your application has written an official letter to which you must respond.  Please follow these steps:

 

(1)  Read the LETTER by clicking on this link or going to http://tsdr.gov.uspto.report/, entering your U.S. application serial number, and clicking 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)  Respond within 6 months (or sooner if specified in the Office action), calculated from 5/2/2019, using the Trademark Electronic Application System (TEAS) response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  A response transmitted through TEAS must be received before midnight Eastern Time of the last day of the response period.

 

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. 

 

(3)  Questions about the contents of the Office action itself should be directed to the trademark examining attorney who reviewed your application, identified below. 

 

/Luz Adorno/

Trademark Examining Attorney, Law Office 111

United States Patent and Trademark Office

(571) 272-4902

Luz.Adorno@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.