Examiners Amendment

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

EXAMINER’S AMENDMENT

 

ISSUE/MAILING DATE: 3/31/2019

 

 

DATABASE SEARCH:  The trademark examining attorney has searched the USPTO’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).

 

APPLICATION HAS BEEN AMENDED:  In accordance with the authorization granted by Benjamin Lofton, owner, via telephone on March 31, 2019, the trademark examining attorney has amended the application as indicated below.  Please advise the undersigned immediately of any objections.  Otherwise, no response is necessary.  TMEP §707.  Any amendments to the identification of goods may clarify or limit the goods, but may not add to or broaden the scope of the goods.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq.

 

SUMMARY OF AMENDMENTS:

• AMENDED DESCRIPTION OF THE MARK
• DISCLAIMER ADDED

 

AMENDED DESCRIPTION OF THE MARK

 

The following description of the mark replaces the current description of record:

 

The mark consists of the stylized wording "DELTA OUTDOORS CO." inside of a hexagon with a feather representing the letter "L". The wording "DELTA" is above "OUTDOORS CO."

 

See 37 C.F.R. §§2.37, 2.72; TMEP §§808 et seq.

 

 

DISCLAIMER ADDED

 

The following disclaimer statement is added to the record:

 

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

 

See 15 U.S.C. §1056(a); TMEP §§1213, 1213.08(a)(i).

 

 

WHAT HAPPENS NEXT

 

After the trademark examining attorney issues the examiner’s amendment, applicant will not receive a registration on the Principal Register for the applied-for mark until the mark makes it through the publication process and opposition period.  The publication process starts once the trademark examining attorney issues the examiner’s amendment and the mark is approved for publication in the USPTO’s Trademark Official Gazette, a weekly online publication.  The USPTO will then send a “Notice of Publication” to the applicant specifying the date its mark will publish in this publication.

 

The USPTO publishes applicant’s mark in the Trademark Official Gazette to provide third parties who believe they may be damaged by registration of applicant’s mark an opportunity to oppose registration of that mark within thirty (30) days from the publication date.  An “opposition” is similar to a federal court proceeding, but this proceeding is held before the Trademark Trial and Appeal Board, a USPTO administrative tribunal of administrative judges who issue decisions on these matters.  If a third party opposes registration of applicant’s mark by instituting an opposition proceeding, the USPTO will send applicant notice of this opposition.  When this occurs, an applicant may wish to hire an attorney due to the complexity of these proceedings.

 

If no one opposes registration of the mark, and the mark was published based upon an applicant’s bona fide intention to use the mark in commerce, the USPTO generally issues a “Notice of Allowance” within approximately eight (8) weeks after the publication date.  Applicant then has six (6) months from the date of the Notice of Allowance to timely file a “Statement of Use” or to file a request for a six-month “Extension of Time to file a Statement of Use” (extension request).  Extension requests are granted in six-month increments and a maximum of five extension requests can be filed after the issuance of the Notice of Allowance.  If a Statement of Use is not filed within the six months after the Notice of Allowance issued, a Statement of Use must be filed within the time period of a previously granted extension request.  The USPTO will only issue a registration certificate after the trademark examining attorney approves a Statement of Use.

 

For an overview of the time frames for when an applicant should file and the USPTO will issue documents related to a trademark application, see Trademark Application and Post-Registration Process Timelines.  Forms for Statements of Use and extension requests, and additional requirements for intent to use applications, are available online at Intent to Use (ITU) Forms.

 

INFORMATION ON SPECIMENS

 

For information on what a specimen is, applicant is encouraged to view the USPTO’s Trademark Information Network Video number 8, “Specimen.”

 

 

ADVISORY: POSSIBLE SECTION 1, 2, AND 45 REFUSAL – MARK IS MERELY ORNAMENTAL

 

Applicant is advised that, upon consideration of an allegation of use, registration may be refused on the ground that the applied-for mark as used on the specimen of record is merely a decorative or ornamental feature of the goods and, thus, does not function as a trademark to indicate the source of applicant’s goods and to identify and distinguish them from others.  Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§1051-1052, 1127; see In re David Crystal, Inc., 296 F.2d 771, 773, 132 USPQ 1, 2 (C.C.P.A. 1961); In re Villeroy & Boch S.A.R.L., 5 USPQ2d 1451, 1454-55 (TTAB 1987); TMEP §§904.07(b), 1202.03 et seq.

 

The following factors are considered when determining whether the public would perceive the applied-for mark as a trademark or merely as a decorative or ornamental feature:  the commercial impression made by the mark on the specimen, any prior registrations of the same mark for other goods, promotion of the applied-for mark as a trademark, and the practices of the relevant trade.  See In re The Todd Co., 290 F.2d 597, 599-600, 129 USPQ 408, 409-10 (C.C.P.A. 1961); In re Dimitri’s Inc., 9 USPQ2d 1666, 1668 (TTAB 1988); In re Paramount Pictures Corp., 213 USPQ 1111, 1115 (TTAB 1982); In re Jockey Int’l, Inc., 192 USPQ 579, 581-83 (TTAB 1976); TMEP §§1202.03 et seq.  For more information, see the Ornamental Refusal webpage.

 

 

/Aubrey Biache/

Examining Attorney

Trademark Law Office 123

(571) 270-0120

aubrey.biache@uspto.gov

 

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 Trademark Electronic Application System (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 3/31/2019 FOR U.S. APPLICATION SERIAL NO.88257378

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.gov.uspto.report/, enter the U.S. application serial number, and click 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)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

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.