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: 3/31/2019

 

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

 

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).

 

SUMMARY OF ISSUES:

• Ornamental Refusal
• Advisory for Duplicate Entry in the Identification of Goods

 

ORNAMENTAL REFUSAL

 

Registration is refused because 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 Villeroy & Boch S.A.R.L., 5 USPQ2d 1451, 1454 (TTAB 1987); TMEP §§904.07(b), 1202.03 et seq.

 

Whether a designation functions as a mark depends on the commercial impression it makes on the relevant public; that is, whether purchasers would likely regard it as a source-indicator for the goods.  See In re Keep A Breast Found., 123 USPQ2d 1869, 1879 (TTAB 2017) (quoting In re Eagle Crest Inc., 96 USPQ2d 1227, 1229 (TTAB 2010)); TMEP §1202.  The specimen and any other relevant evidence of use is reviewed to determine whether an applied-for mark is being used as a trademark.  In re Bose Corp., 546 F.2d 893, 897, 192 USPQ 213, 216 (C.C.P.A. 1976); In re Volvo Cars of N. Am., Inc., 46 USPQ2d 1455, 1459 (TTAB 1998).

 

In this case, the submitted specimen shows the applied-for mark, MEIGIX, located directly along the side of the drinking vessel, where ornamental elements often appear.  See TMEP §1202.03(a), (b).  Furthermore, the mark is displayed in a relatively large size on the drinking vessel such that it dominates the overall appearance of the goods.  Lastly, the applied-for mark appears to be a slogan or design element that is used in a merely decorative manner that would be perceived by consumers as having little or no particular source-identifying significance.

 

In appropriate circumstances, applicant may overcome this refusal by satisfying one of the following options:

 

(1)       Submit a different specimen (a verified “substitute” specimen) that (a) 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) and (b) shows proper trademark use for each international class identified in the application or amendment to allege use.

 

(2)       Amend to the Supplemental Register, which is a second trademark register for marks not yet eligible for registration on the Principal Register, but which may become capable over time of functioning as source indicators. 

 

(3)       Claim acquired distinctiveness under Trademark Act Section 2(f) by submitting evidence that the applied-for mark has become distinctive of applicant’s goods; that is, proof that applicant’s extensive use and promotion of the mark has allowed consumers now directly to associate the mark with applicant as the source of the goods.

 

(4)       Submit evidence that the applied-for mark is an indicator of secondary source; that is, proof that the mark is already recognized as a source indicator for other goods or services that applicant sells/offers.    

 

(5)       Amend the filing basis to intent to use under Section 1(b).  This option will later necessitate additional fees and filing requirements.

 

For an overview of the response options above and instructions on how to satisfy each option online using the Trademark Electronic Application System (TEAS) form, see the Ornamental Refusal webpage.

 

 

ADVISORY FOR DUPLICATE ENTRY IN THE IDENTIFICATION OF GOODS

 

Applicant is advised to delete or modify the duplicate entry in the identification of goods in International Class 21 for “Egg cups.”  See generally TMEP §§1402.01, 1402.01(a).  If applicant does not respond to this issue, be advised that the USPTO will remove duplicate entries from the identification prior to registration.

 

If modifying the duplicate entry, applicant may amend it 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.  Also, generally, any deleted goods and/or services may not later be reinserted.  TMEP §1402.07(e).

 

Applicant may substitute the following wording, if accurate:

 

International Class 21:  Coffee filters not of paper being part of non-electric coffee makers; Coffee grinders, hand-operated; Coffee mugs; Coffee percolators, non-electric; Coffee pod holders; Coffee pots; Coffee pots not of precious metal; Coffee scoops; Coffee servers; Coffee services of china; Coffee stirrers; Cup cake molds; Cup lids; Cupcake baking cups; Cupcake molds; Cupcake stands; Cups; Cups and mugs; Cups, not of precious metal; Animal activated animal feeders; Bait buckets sold separately or with a pump affixed thereto for aerating live bait; Baking cups of paper; Basting spoons; Bath accessories, namely, cup holders; Bath brushes; Bath products, namely, body sponges; Bath products, namely, loofah sponges; Bath products, namely, natural sea sponges; Beakers, namely, wide-mouthed drinking cups for household use; Biodegradable paper pulp-based plates, bowls and cups; Bottle sleeves composed of liquid-absorbing micro fiber fabric; Bowls made of precious metal; Boxes of precious metal for sweets; Bulb basters; Candle holders of precious metal; Candle rings of precious metal; Candle snuffer and tray combination made in whole or in part of precious metal; Candle snuffers of precious metal; Candlesticks of precious metal; Candy jars sold empty; Car washing mitts; Cardboard cups; Ceramic figurines; Cheese graters; Cleaning brushes for barbecue grills; Cleaning sponges; Coffee cups; Coffee cups, tea cups and mugs; Coffee pots of precious metal; Coffee services not of precious metal; Coffee services of precious metal; Compostable and biodegradable plates, bowls, cups and trays; Crockery, namely, pots, dishes, drinking cups and saucers, bowls, serving bowls and trays; Cruet stands for oil or vinegar of precious metal; Cruet stands of precious metal; Crushers for kitchen use, non-electric; Demitasse sets comprised of cups and saucers; Demitasse sets comprised of cups, saucers and stirring spoons sold as a unit; Dishers; Disposable beverage lid with an integrated press and plunger for placement on any cup for the purpose of infusing beverages; Dog food scoops; Double wall cups; Double wall cups with lids; Drinking cups; Drinking cups and saucers; Drinking cups for babies and children; Drinking cups for babies and children and parts and fittings therefor, namely, cups for babies and children sold as a unit with valves and lids; Drinking cups for children and parts and fittings therefor, namely, drinking cups for children sold as a unit with non-insulated lids; Drinking cups for infants and parts and fittings therefor, namely, valves and lids sold as a unit; Drinking cups sold with lids therefor; Dryer balls sold empty used to disperse disinfectants to articles in a dryer; Dryer balls that are placed in the clothes drying machine with the clothing to assist in the drying process; Egg cups; Egg cups of precious metal; Electric face cleansing brushes; Electric hot brushes; Electric hot combs; Electric rotary hair brush for styling a user's hair; Electrically-heated hair brushes; Epergnes of precious metals; Fiberglass web for conversion into a variety of industrial and consumer goods; Flower bowls of precious metal; Fragrance oil burners; Grill scrapers; Growlers; Hand-operated coffee grinders; Hand-operated vaporizers for household purposes; Hot air hair brushes; Ice cream scoops; Insulating sleeve holder for beverage cups; Japanese rice bowls of precious metal (chawan); Japanese style tea-serving pots of precious metal (kyusu); Mixing cups; Napkin holders of precious metal; Napkin rings of precious metal; Non-electric coffee makers; Non-electric coffee dripper for brewing coffee; Non-electric coffee percolators; Non-electric coffee pots; Non-electric candelabras made of precious metal; Non-electric coffee servers of precious metal; Non-electric coffeepots of precious metal; Non-electric cooking steamers; Non-electric crushers for kitchen use; Non-electric French presses; Non-electric warmers for use with tea candles to melt scented wax tarts; Non-electrical coffee grinders; Paper cupcake baking liners; Paper cups; Paper and plastic cups; Paper baking cups; Paper plates and paper cups; Pillar candle plate made in whole or in part of precious metal; Plastic cups; Plunger-style coffee makers, non-electric; Potpourri dishes made in whole or in part of precious metal; Re-usable or disposable plastic or silicone valves sold for use with training cups for babies and children; Reusable self-sealing lids for household use for bowls, cups, containers and the storage of food; Sake cups; Salt shakers of precious metal; Saucers made of precious metals; Scoops for the disposal of pet waste; Serviette rings of precious metal; Serving platters of precious metal; Serving trays of precious metal; Silicone cupcake baking liners; Silicone baking cups; Sippy cups; Squeegees for dishes; Squeegees for shaving brushes; Sugar bowls of precious metal; Tankards not of precious metal; Tankards of precious metal; Tart scoops; Tea balls of precious metal; Tea infusers of precious metal; Tea pots not of precious metal; Tea pots of precious metal; Tea services of precious metal; Toothbrush head covers; Toothpick holders; Toothpick holders of precious metal; Training cups for babies and children; Training cups for infants; Vases of precious metal; Wooden cooking spoons

 

ID Manual Online

 

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.

 

 

RESPONSE GUIDELINES

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

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.

 

Applicant May Wish to Seek Trademark Counsel

 

Because of the legal technicalities and strict deadlines involved in the USPTO application process, applicant may wish to hire a qualified U.S. 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 or an online directory of legal professionals, such as FindLaw®.  The USPTO, however, may not assist an applicant in the selection of a private attorney.  37 C.F.R. §2.11.

 

Please note that foreign attorneys, other than duly authorized Canadian attorneys, are not permitted to represent applicants before the USPTO.  See 37 C.F.R. §§2.17(e), 11.14(c), (e); TMEP §602.03-.03(c).  The only attorneys who may practice before the USPTO in trademark matters are (1) attorneys in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and other U.S. commonwealths/territories; and (2) duly authorized Canadian agents/attorneys.  See 37 C.F.R. §§2.17(e), 11.14(a), (c); TMEP §602.

 

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.  

 

 

 

/LaShawnda Elliott/

LaShawnda Elliott

Trademark Examining Attorney

Law Office 125

(571) 272-5409

lashawnda.elliott@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 3/31/2019 FOR U.S. APPLICATION SERIAL NO. 88269060

 

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 3/31/2019, 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. 

 

/LaShawnda Elliott/

LaShawnda Elliott

Trademark Examining Attorney

Law Office 125

(571) 272-5409

lashawnda.elliott@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.