To: | Steven Davis (darin@marguleslawfirm.com) |
Subject: | U.S. Trademark Application Serial No. 88276546 - BREATHE CLEAR INSTITUTE - N/A |
Sent: | October 30, 2019 12:01:53 PM |
Sent As: | ecom114@uspto.gov |
Attachments: | Attachment - 1 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88276546
Mark: BREATHE CLEAR INSTITUTE
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Correspondence Address: LAW OFFICE OF DARIN MARGULES, APLC 17835 VENTURA BLVD., SUITE 104
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Applicant: Steven Davis
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Reference/Docket No. N/A
Correspondence Email Address: |
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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 30, 2019
This Office action is supplemental to and supersedes the previous Office action issued on April 10, 2019 in connection with this application. The assigned trademark examining attorney inadvertently omitted a requirement relevant to the mark in the subject application. See TMEP §§706, 711.02. Specifically, applicant must disclaim descriptive wording in the mark.
The trademark examining attorney apologizes for any inconvenience caused by the delay in raising this issue(s).
Applicant must address all issue(s) raised in this Office action, in addition to the issues raised in the Office action dated April 10, 2019. The issue(s) raised in the previous April 10, 2019 Office action is/are as follow and is/are maintained:
Further, the following refusal(s) has been withdrawn: Trademark Act Section 2(d) Refusal with respect to Reg. No. 3758640. See TMEP §713.02.
The following is a SUMMARY OF ISSUES that applicant must address:
• NEW ISSUE: Disclaimer Statement Required
Applicant must respond to all issues raised in this Office action and the previous April 10, 2019 Office action, within six (6) months of the date of issuance of this Office action. 37 C.F.R. §2.62(a); see TMEP §711.02. If applicant does not respond within this time limit, the application will be abandoned. 37 C.F.R. §2.65(a).
Disclaimer Statement Required
In this case, applicant must disclaim the wording “INSTITUTE” because it is not inherently distinctive. These unregistrable term(s) at best are 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).
The attached evidence from Collins dictionary defines INSTITUTE as “an organization set up to do a particular type of work, especially research or teaching.” Applicant may be developing its goods and providing its services via an INSTITUTE. Therefore, this wording merely describes the source of the goods and services, namely, an INSTITUTE.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “INSTITUTE” 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.
Response Guidelines
If applicant has questions about its application or needs assistance in responding to this Office action, please telephone 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.
How to respond. Click to file a response to this nonfinal Office action
Bechhofer, Yocheved
/Yocheved Bechhofer/
Examining Attorney
Law Office 114
571-272-9329
Yocheved.Bechhofer@uspto.gov
RESPONSE GUIDANCE