Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

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:  October 22, 2020

 

This letter is in response to the correspondence filed on August 26, 2020 in which the applicant submits arguments and evidence against the refusals to register raised in previous Office action. In applicant’s correspondence, it seeks to amend the filing bases for the goods in International Classes 022 and 024 to an Intent in Use Filing Basis. This amendment is acceptable and the Refusal to Register Under Trademark Act Section 2(b) is hereby withdrawn. However, applicant should note the following Advisory regarding statement of use responses for these Classes.

 

Upon additional review, the examiner now raises the following requirement. The examiner apologizes for the delay in raising this requirement and for any inconvenience that may result from the delay.

 

After review careful consideration of the arguments and evidence submitted to the record in applicant’s correspondence, the examiner finds them unpersuasive and hereby maintains and CONTINUES the refusal to register under Sections 1 & 45 for all classes for the following reasons.

 

 

NEW ISSUE-REQUIREMENT for Submission of Information Under a General Inquiry-

 

To permit proper examination of the application, applicant must submit additional information about the goods.  See 37 C.F.R. §§2.61(b), 2.69; In re Stellar Int’l, Inc., 159 USPQ 48, 50-52 (TTAB 1968); TMEP §§814, 907.  The requested information should include fact sheets, brochures, advertisements, and/or similar materials relating to the goods.  If such materials are not available, applicant must provide a detailed factual description of the goods. Any information submitted in response to this requirement must clearly and accurately indicate the nature of the goods identified in the application. 

 

In addition, applicant must submit a written statement indicating whether all the goods identified in the application will comply with relevant federal law, including United States Code 18, Section 708. 

 

 

This law prohibits use of the coat of arms for the Swiss confederation in Trademarks for commercial purposes, specifically:

 

Whoever, whether a corporation, partnership, unincorporated company, association, or person within the United States, willfully uses as a trade mark, commercial label, or portion thereof, or as an advertisement or insignia for any business or organization or for any trade or commercial purpose, the coat of arms of the Swiss Confederation, consisting of an upright white cross with equal arms and lines on a red ground, or any simulation thereof, shall be fined under this title or imprisoned not more than six months, or both.

 

 

Finally, applicant must provide written responses to the following questions:

 

1)     What color(s) does the applicant intend to use the mark sought in this application on its goods listed in International Class 018? Please provide color pictures of at least two (2) of the goods listed in International Class 018 showing use (or plans for use/placement) of the mark sought in this application on them.

 

2)     What color(s) does the applicant intend to use the mark sought in this application on its goods listed in International Class 020? Please provide color pictures of at least two (2) of the goods listed in International Class 018 showing use (or plans for use/placement) of the mark sought in this application on them.

 

3)     What color(s) does the applicant intend to use the mark sought in this application on its goods listed in International Class 021? Please provide color pictures of at least two (2) of the goods listed in International Class 018 showing use (or plans for use/placement) of the mark sought in this application on them.

 

4)     What color(s) does the applicant intend to use the mark sought in this application on its goods listed in International Class 022? Please provide color pictures of at least two (2) of the goods listed in International Class 018 showing use of the mark sought in this application on them.

 

5)     What color(s) does the applicant intend to use the mark sought in this application on its goods listed in International Class 024? Please provide color pictures of at least two (2) of the goods listed in International Class 018 showing use of the mark sought in this application on them.

 

 

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.  Merely stating that information about the goods and services is available on applicant’s website is an insufficient response and will not make the relevant information of record.  See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004). 

 

PLEASE NOTE that applicant is advised that, if applicant’s response to this request for information indicates that the goods identified in the application will not comply with United States Code 18, Section 708, registration may be refused on the ground that the applied-for mark is not in lawful use in commerce and/or the applicant does not have a bona fide intent to lawfully use the applied-for mark in commerce.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; see TMEP §907.

 

 

CONTINUED REFUSAL to Register Under Trademark Act Sections 1 & 45 –No Bona Fide Intent

 

Registration is refused for all identified International Classes of goods because applicant does not have a bona fide intent to lawfully use the applied-for mark in commerce.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; see TMEP §907.  This refusal issues when “(1) a violation of federal law is indicated by the application [record] or other evidence, such as when a court or a federal agency responsible for overseeing activity in which the applicant is involved, and which activity is relevant to its application, has issued a finding of noncompliance under the relevant statute or regulation, or (2) when the applicant’s application-[related] activities involve a per se violation of a federal law.”  In re PharmaCann LLC, 123 USPQ2d 1122, 1123 (TTAB 2017) (quoting In re Brown, 119 USPQ2d 1350, 1351 (TTAB 2016)); TMEP §907.

 

To qualify for a federal registration, the use of a mark must be lawful.  Gray v. Daffy Dan’s Bargaintown, 823 F.2d 522, 526, 3 USPQ2d 1306, 1308 (Fed. Cir. 1987); In re PharmaCann LLC, 123 USPQ2d at 1123-24.

 

Federal law prohibits or restricts the use of the coat of arms for the Swiss Federation under US Code 18, Section 708.  Specifically, under Sections 1 & 45, 15 U.S.C. §§1051, 1127 the applicant fails to have a bona fide intention to use the mark sought in this application because it is prohibited from use of the coat of arms for the Swiss Federation under US Code 18, Section 708.

 

Under the provisions of US Code 18, Section 708, use of the coat of arms for the Swiss confederation in Trademarks for commercial purposes, specifically:

 

Whoever, whether a corporation, partnership, unincorporated company, association, or person within the United States, willfully uses as a trade mark, commercial label, or portion thereof, or as an advertisement or insignia for any business or organization or for any trade or commercial purpose, the coat of arms of the Swiss Confederation, consisting of an upright white cross with equal arms and lines on a red ground, or any simulation thereof, shall be fined under this title or imprisoned not more than six months, or both.

 

 

Attached are pages from the website for the Swiss Federal Institute of Intellectual Property’s Frequently Asked Questions page [ige.ch/en/protecting-your-ip/indications-of-source/indications-of-source-basics/swissness/the-swiss-coat-of-arms.html] showing that the Swiss Federation coat of arms is not permitted for use by private companies. In this case, the applied-for mark consists of or includes the wording SUISSE combined with an un-stylized coat of arms for the Swiss Federation.  Use of the Swiss Federation coat of arms is legally prohibited from use by anyone other than those designated by law.  Use of the term SUISSE merely reinforces the impression that the cross and shield design is for the Swiss Federation here.

 

Nothing in the record for this application shows applicant to be one of the designated parties permitted to use such the Swiss Federation coat of arms.  Thus, applicant cannot have a bona fide intent to lawfully use the applied-for mark in commerce. In this case, the applied-for mark consists of or includes the coat of arms for the Swiss Federation, a designation that is legally prohibited from use by anyone.  Thus, applicant cannot have a bona fide intent to lawfully use the applied-for mark in commerce.

 

In its correspondence, the applicant argues that because the entirety of the mark sought in this application is not only the Swiss coat of arms, it is improper to refuse registration in this case. The applicant also argues that since it does not claim color as a feature of its mark, that it does not list color in its mark description statement and since the applicant is seeking registration under an Intent to Use filing basis that it is improper to maintain a refusal under Sections 1 & 45 in this case.

 

These arguments are unpersuasive as they are not supported by Trademark law. The applicant should note that a refusal under Sections 1 & 45 of the Trademark Act must be issued: “if a mark contains an element composed of an upright equilateral cross on a triangular shield (or a simulation thereof) that is not significantly altered, stylized, or merged with other elements in the mark; and any of the following conditions exist; …the drawing is not in color, there is no color claim, the mark description does not reference color …and there is no specimen of record (because one …is not required), but the examining attorney has found extrinsic evidence indicating that the applicant actually uses the mark in the white cross/red shield color scheme.” Even if the application record itself does not provide evidence of unlawful use, it may be appropriate in some instances to base a refusal under §§1 and 45 on extrinsic evidence of applicant’s use of the mark. If the examining attorney locates relevant extrinsic evidence in the course of examining the mark, that evidence may be used to support the refusal. See TMEP § 1205.01(d)(i).

 

Attached are pages from the Internet websites for online webpages for Gear Trade [geartrade.com/item/669479/suisse-sport-sleeping-bag?gclid=EAIaIQobChMI7bLTioLJ7AIVD2-GCh1tOwcoEAQYAyABEgKNKvD_BwE], Gander Outdoors [ganderoutdoors.com/dw/image/v2/BCJK_PRD/on/

demandware.static/-/Sites-global-master-], DTN Discount Tents Nova [discounttentsnova.com/product/suisse-sport-mammoth-tent-6-person-olivekhaki/] and Amazon.com [amazon.com/gp/product/B001TR7QZA/ref=oh_details_o01_s00_i00]. All of these pages show clear use of the coat of arms for the Swiss Federation in the colors white and red by the applicant for commercial use a trademark on sleeping bags and tents goods, all in violation of US Code 18, Section 708. Given the extrinsic evidence of the applicant’s use of the coat of arms of the Swiss Federation attached to this and the previous Office action, the refusal to register under Sections 1 & 45 must be maintained and continued in this case.

 

The applicant argues that the examiner has failed to show evidence of “the element of willfulness” on the part of the applicant in using the mark sought in this application. Evidence attached to this action showing the applicant’s continued use of the coat of arms of the Swiss Federation was captured on October 22, 2020 –well over a year after the applicant received notice from this Office regarding the illegal nature of its use of the coat of arms for the Swiss Federation.  The applicant’s continued use of the Swiss Federation coat of arms in violation of Federal Law is clear and ample evidence of applicant’s willful misuse in this case, refuting the applicant’s arguments here.

 

The applicant also references other marks using a similar cross and shield design that have been registered, however, none of the cited registrations support the registrability of the mark sought here. None are analogous to the facts of record here because the design elements are either used in colors other than red and white, integrated into a unitary mark, containing other design elements in the shield apart from the cross or the design elements are highly stylized –all facts that do not appear in mark sought in this application.

 

The applicant should also note that even if any of the listed registrations were analogous to the facts of record for this application [although none are], none were properly entered into the record here. Applicant should note that the mere submission of a list of registrations does not make such registrations part of the record.  See In re Peace Love World Live, LLC, 127 USPQ2d 1400, 1405 n.17 (TTAB 2018) (citing In re 1st USA Realty Prof’ls, 84 USPQ2d 1581, 1583 (TTAB 2007); In re Duofold Inc., 184 USPQ 638, 640 (TTAB 1974)); TBMP §1208.02; TMEP §710.03.

 

To make third party registrations part of the record, an applicant must submit copies of the registrations, or the complete electronic equivalent from the USPTO’s automated systems, prior to appeal.  In re Star Belly Stitcher, Inc., 107 USPQ2d 2059, 2064 (TTAB 2013); TBMP §1208.02; TMEP §710.03.  Accordingly, these registrations will not be considered.

 

The applicant also argues against the refusal to register the mark sought in this application because the examiner improperly dissected the mark in finding use of the coat of arms violated Federal law and that the mark sought here is unitary, thus the coat of arms is inseparable from the rest of the mark elements.

 

The applicant should note that its argument is refuted by the text of Sections 1 & 45 which states: “if a mark contains an element composed of an upright equilateral cross on a triangular shield (or a simulation thereof) that is not significantly altered, stylized, or merged with other elements in the mark”. Given this, an element of the mark sought here -specifically the design element of an equilateral cross on a triangular shield- is not altered, stylized or merged with any other element of the mark as it separates two words and is not joined to either word or the other design element of the outline of two mountains. Thus, the applicant’s use of the mark element of the coat of arms of the Swiss Federation is a violation of federal law because it is not stylized at all and it is separable from all other elements comprising the mark in this case. Accordingly, the refusal to register the mark sought in this application is well supported by Trademark law and the facts of record and is hereby maintained and CONTINUED here.

 

 

 ADVISORY -Response Options for Intent to Use Applications

 

Applicant may respond to these refusals by satisfying one of the following:

 

(1)    Submit a written statement that applicant is an authorized party under 18 U.S.C. §706a, specifying how applicant is authorized by the Swiss Federation for use of the coat of arms.  TMEP §1205.01(d).

 

(2)    Submit (a) an amended drawing showing the emblem deleted from the mark, as this matter is separable from the other elements in the mark, and (b) an amendment to revise any mark description to reflect this deletion.  See TMEP §1205.01(d)(i)(D), (d)(ii)(D).

 

In this case, amending the drawing in accordance with the above recommendation would not be considered a material alteration of the mark.  37 C.F.R. §2.72(a)(2); see TMEP §§807.12(a), 807.14 et seq., 1205.01(d)(i)(D).

 

A disclaimer or an amendment to add a Section 2(f) claim of acquired distinctiveness, or to seek registration on the Supplemental Register will not overcome these refusals and are thus not appropriate responses.  See TMEP §§1205.01(d)(i)(D), (d)(ii)(D). 

 

How to respond:  Click to file a response to this nonfinal Office action.    

 

 

/Amy Kean/

Trademark Attorney, Law Office 112

Phone: 571-272-8854

Amy.Kean@uspto.gov

 

 

 

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on October 22, 2020 for

U.S. Trademark Application Serial No. 88265200

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Amy Kean/

Trademark Attorney, Law Office 112

Phone: 571-272-8854

Amy.Kean@uspto.gov

 

 

 

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from October 22, 2020, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”