To: | Sterling International Inc. (efiling@cojk.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88265662 - POP! FLY TRAP - STIL-2-58800 |
Sent: | 3/20/2019 6:21:30 PM |
Sent As: | ECOM104@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88265662
MARK: POP! FLY TRAP
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Sterling International Inc.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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: 3/20/2019
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.
SEARCH OF OFFICE’S DATABASE OF MARKS
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).
In this case, applicant must disclaim the wording “FLY TRAP” because it is not inherently distinctive. These unregistrable term(s) at best are merely descriptive, or misdescriptive, of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services. See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a).
The attached evidence from merriam-webster.com shows this wording means “a trap for catching flies often having the form of a wire or glass cylinder with a conical cover and bottom in which is a small opening.” Thus, the wording merely describes, or misdescribes, applicant’s goods because they are in the nature of traps for catching flies and pesticides.
In addition, applicant must disclaim the design of the fly because it is not inherently distinctive. This unregistrable design at best is merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services. See 15 U.S.C. §§1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a), (c). In addition, see the enclosed excerpts from Wikipedia.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “FLY TRAP” and the design of the fly apart from the mark as shown.
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 submit an amended description of the mark because the current one is incomplete and does not describe all the significant aspects of the mark. 37 C.F.R. §2.37; see TMEP §§808.01, 808.02. Descriptions must be accurate and identify all the literal and design elements in the mark. See 37 C.F.R. §2.37; TMEP §§808 et seq.
The following description is suggested, if accurate: The mark consists of a design applied to the goods. The background of the image is primarily orange and light green. On that background at the top is an irregular green field extending from the edge to a little over three quarters of the top of the design ending in a straight edge and extending downward approximately one quarter the way down at its lowest point. To the left of the green field is an irregular field of light green dots against an orange background extending from the upper edge of the design downward to about two thirds the way down the label. Below the green field is the word to the word POP! in stylized black block letters outlined in light green and white. The top of the initial P overlaps the upper green field. Partially overlapping the POP! in stylized block white letters outlined in black are the words FLY TRAP. The background upon which the POP! FLY TRAP appears is orange with irregular light green dots. Beneath the words is a solid light green rectangle. Below and to the right of the rectangle is a stylized black and white image of a fly on a yellow green and white background that is a rectangle with a white arch for a left edge. At the bottom of the design is a green rectangle. To the right is a continuation of the label consisting of an irregular green top with the rest of the label being in orange. Except as otherwise noted, the color white indicates background, outlining, shading, and/or transparent areas and is not part of the mark.
MARK ON THE DRAWING AND SPECIMEN DIFFER
Registration is refused because the specimen does not show the mark in the drawing in use in commerce, which is required in the application or amendment to allege use. 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 specimen displays the mark as one side of a product label. However, the drawing displays the mark as two sides of a product label. The mark on the specimen does not match the mark in the drawing because it does not depict the second side of the product label. 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 new drawing of the mark that shows the mark on the specimen and, if appropriate, an amendment of the description and/or color claim that agrees with the new drawing. See 37 C.F.R. §2.72(a)-(b). The following amended description is suggested, if accurate: “The mark consists of a design applied to the goods. The background of the image is primarily orange and light green. On that background at the top is an irregular green field extending from the edge to a little over three quarters of the top of the design ending in a straight edge and extending downward approximately one quarter the way down at its lowest point. To the left of the green field is an irregular field of light green dots against an orange background extending from the upper edge of the design downward to about two thirds the way down the label. Below the green field is the word to the word POP! in stylized black block letters outlined in light green and white. The top of the initial P overlaps the upper green field. Partially overlapping the POP! in stylized block white letters outlined in black are the words FLY TRAP. The background upon which the POP! FLY TRAP appears is orange with irregular light green dots. Beneath the words is a solid light green rectangle. Below and to the right of the rectangle is a stylized black and white image of a fly on a yellow green and white background that is a rectangle with a white arch for a left edge. At the bottom of the design is a green rectangle. Except as otherwise noted, the color white indicates background, outlining, shading, and/or transparent areas and is not part of the mark.” Applicant may amend the mark in the drawing to match the mark on the specimen but may not make any other changes or amendments that would materially alter the drawing of the mark. See 37 C.F.R. §2.72(a)-(b); TMEP §807.14.
(2) 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 and/or services in the application or amendment to allege use, and (b) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use.
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). Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and webpages that show the mark used in the actual sale, rendering, or advertising of the services. See TMEP §1301.04(a), (h)(iv)(C).
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.
/Barney L. Charlon/
Trademark Examining Attorney
Law Office 104
(571) 272-9141
(571) 272-9104 (fax)
barney.charlon@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.