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: 4/5/2019

 

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).

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

SUMMARY OF ISSUES

• Trademark Act Section 2(a) Refusal—False Association
• Drawing Unacceptable
• Mark Description and Color Claim Amendment Required

 

TRADEMARK ACT SECTION 2(a) REFUSAL—FALSE ASSOCIATION

 

Registration is refused because the applied-for mark consists of or includes matter which may falsely suggest a connection with Mattel.  Trademark Act Section 2(a), 15 U.S.C. §1052(a).  Although Mattel is not connected with the goods and/or services provided by applicant under the applied-for mark, Mattel, and their creation Barbie is so well-known that consumers would presume a connection.  See id.

 

Under Trademark Act Section 2(a), the registration of a mark that “consists of or comprises matter that may falsely suggest a connection with persons, institutions, beliefs, or national symbols” is prohibited.  In re Pedersen, 109 USPQ2d 1185, 1188 (TTAB 2013).  To establish that an applied-for mark falsely suggests a connection with a person or an institution, the following is required:

 

(1)       The mark sought to be registered is the same as, or a close approximation of, the name or identity previously used by another person or institution.

 

(2)       The mark would be recognized as such, in that it points uniquely and unmistakably to that person or institution.

 

(3)       The person or institution identified in the mark is not connected with the goods sold or services performed by applicant under the mark.

 

(4)       The fame or reputation of the named person or institution is of such a nature that a connection with such person or institution would be presumed when applicant’s mark is used on its goods and/or services.

 

In re Pedersen, 109 USPQ2d at 1188-89; In re Jackson Int’l Trading Co., 103 USPQ2d 1417, 1419 (TTAB 2012); TMEP §1203.03(c)(i); see also Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imps. Co., 703 F.2d 1372, 1375-77, 217 USPQ 505, 508-10 (Fed. Cir. 1983) (providing foundational principles for the current four-part test used to determine the existence of a false connection).

 

In this case, the attached evidence from Mattel.com and the Oxford and Collins dictionaries establishes that BARBIE is a widely recognized doll and character closely associated with the company Mattel which developed the doll in 1959. The attached evidence from Mattel.com as well as the attached registrations establishes that the applied-for mark is in the font closely most commonly used for this character BARBIE.

 

The attached evidence from Mattel, Reason, Inquisitr, Insider, Vogue, News Day, Daily Telegraph, and Irish News establish that the character BARBIE is widely recognized for her many careers, in particular, her career as a nurse beginning in 1961 and continuing to today. The same evidence establishes that the character in this career is widely known as NURSE BARBIE and that this phrase points uniquely and unmistakably to this character, which is the face of Mattel.  

 

As to the third factor, there is no evidence that the institution identified in the mark is connected with the services performed by Applicant under the mark. Due to the renown of the institution or person named in the mark, and the fact that there is no information in the application record regarding a connection with applicant, applicant must specify whether the person or institution named in the mark has any connection with applicant’s goods and/or services, and if so, must describe the nature and extent of that connection.  See 37 C.F.R. §2.61(b); TMEP §1203.03(c)(i). 

 

As to the fourth factor, not only is the named institution world famous, the character of Barbie regularly provides blogs, acts as a social media influencer, and provides services of the type identified in the application as the attached evidence from YouTube®, WWD, and Instagram® establishes.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.  However, if applicant responds to the refusal, applicant must also respond to the requirements set forth below.

 

DRAWING UNACCEPTABLE

 

Applicant must submit a new drawing with the™ symbol deleted from the drawing of the mark; this symbol is not part of the mark and is not registrable.  See 37 C.F.R. §2.72; TMEP §807.14(a).  Although applicant must delete this matter, applicant may not make any other changes or amendments that would materially alter the drawing of the mark.  See 37 C.F.R. §2.72; TMEP §§807.14 et seq.  For more information about deleting matter from the drawing, see the Drawing webpage.

 

Applicant should note the following additional requirements.

 

MARK DESCRIPTION AND COLOR CLAIM AMENDMENT REQUIRED

 

Although applicant submitted a color drawing with a description referencing colors in the mark, applicant did not provide a list of all the colors claimed as a feature of the mark, known as a color claim.  Therefore, applicant must provide this required color claim.  37 C.F.R. §2.52(b)(1); see TMEP §§807.07(a) et seq. 

 

Although applicant submitted a drawing showing the mark in color with a color claim, applicant did not provide the required description that specifies where each color appears in the literal and design elements in the mark and Applicant has claimed colors which do not appear in the mark.  See 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §807.07(a)-(a)(ii).  Therefore, applicant must provide this description.  See TMEP §807.07(a)(ii). 

 

Generic color names must be used to describe the colors in the mark, e.g., red, yellow, blue.  TMEP §807.07(a)(i)-(ii).  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 is suggested, if accurate:  “The colors black, white and red are claimed as a feature of the mark.”  TMEP §807.07(a)(i).

 

The following description is suggested, if accurate:  “The mark consists of the following:  a white nurse’s cap outlined in black with a central red design. This cap sits on top of the first letter of the stylized red wording “NURSE BARBIE”. The last letter “E” in this stylized red wording forms the tube of a red black and white stethoscope. The remainder of the white in the mark represents merely background and is not claimed as part of the mark.

 

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.

 

TRADEMARK COUNSEL 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.

 

 

/Mark Riso/

Mark Riso

Trademark Examining Attorney

Office 108

Phone (571)272-0167

mark.riso@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 4/5/2019 FOR U.S. APPLICATION SERIAL NO. 88264469

 

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 4/5/2019, 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. 

 

Riso, Mark

/Mark Riso/

Mark Riso

Trademark Examining Attorney

Office 108

Phone (571)272-0167

mark.riso@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.