Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

SECOND 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:  July 17, 2019

 

This Office action is in response to applicant’s communication filed on June 24, 2019.

 

In a previous Office action(s) dated May 8, 2019, the applicant was required to satisfy the Requirement for Disclaimer.

 

Based on applicant’s response, the trademark examining attorney maintains previous issues and now makes the NEW refusal(s) and/or requirement(s) in the summary of issues below. 

 

SUMMARY OF ISSUES that applicant must address:

• Requirement for Disclaimer
• Amendment to Section 2(f)-In-Part, Unacceptable  

 

REQUIREMENT FOR DISCLAIMER

 

Applicant must provide a disclaimer of the unregistrable part(s) of the applied-for mark even though the mark as a whole appears to be registrable.  See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a).  A disclaimer of an unregistrable part of a mark will not affect the mark’s appearance.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965).

                                                     

Applicant must disclaim the wording “MILWAUKEE” because it is not inherently distinctive.  These unregistrable term(s) are at best primarily geographically descriptive of the origin of applicant’s goods and/or services.  See 15 U.S.C. §§1052(e)(2); In re Societe Generale des Eaux Minerales de Vittel S.A., 824 F.2d 957, 959, 3 USPQ2d 1450, 1451-52 (Fed. Cir. 1987); TMEP §§1210.01(a), 1210.06(a), 1213.03(a).

 

The attached evidence from Columbia Gazetteer shows that Milwaukee is a generally known geographic place or location.  See TMEP §§1210.02 et seq.  The goods for which applicant seeks registration originate in this geographic place or location as shown by applicant’s address which is only 15 minutes from Milwaukee.  See TMEP §1210.03; see also attached map evidence.  Because the goods originate near the place or location identified in the mark, a public association of the goods with the place is presumed.  See In re Hollywood Lawyers Online, 110 USPQ2d 1852, 1858 (TTAB 2014) (citing In re Spirits of New Merced, LLC, 85 USPQ2d 1614, 1621 (TTAB 2007)); TMEP §§1210.02(a) 1210.04. 

 

Applicant may respond to this issue by submitting a disclaimer in the following format:

 

No claim is made to the exclusive right to use “MILWAUKEE” 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.

 

Amendment to Section 2(f)-In-Part, Unacceptable  

 

Applicant has claimed acquired distinctiveness under Section 2(f) as to the term “MILWAUKEE” in the applied-for mark.  However, applicant bases this claim on prior registrations that do not show acquired distinctiveness of the term “MILWAUKEE” apart from other distinctive elements of its prior registrations.

 

An applicant may claim that a geographic component of a mark has acquired distinctiveness under §2(f). See TMEP §1212.02(f) regarding claims of acquired distinctiveness as to a portion of a mark. Thus, if the examining attorney requires a disclaimer of matter that is primarily geographically descriptive under Trademark Act Section 2(e)(2), the applicant may seek to overcome the disclaimer requirement by submitting a showing that the geographic component has acquired distinctiveness under §2(f). If the applicant is able to establish to the satisfaction of the examining attorney that the geographic component has acquired distinctiveness, the examining attorney will approve the mark for publication with a notation that there is a claim of distinctiveness under §2(f) as to the geographic component, if appropriate.  See TMEP §1210.07(b).

 

Further, the identifications in the prior registration are for goods such as batteries and battery chargers, hand tools, power tools, and radios, none of which are sufficiently similar to the present application’s heated clothing, flashlights, lanterns for lighting, flood lights, LED flashlights, portable utility lights, portable battery-operated lights, and/or spot lights.

 

If applicant believes that a portion of the mark has acquired distinctiveness, applicant may amend the application to add a claim of acquired distinctiveness as to that portion under Trademark Act Section 2(f).  See 15 U.S.C. §1052(f); TMEP §1212.02(f)(i).  Evidence in support of this claim may consist of one or more of the following:

 

(1)            Prior Registrations:  Applicant may claim ownership of one or more active prior registrations on the Principal Register of that portion of the mark for goods and/or services that are sufficiently similar to those named in the pending application.  TMEP §1212.02(f)(i); see 37 C.F.R. §2.41(a)(1).  

 

Applicant may do so by submitting the following statement, if accurate:  “The wording MILWAUKEE in the mark has become distinctive of the goods and/or services as evidenced by the ownership of active U.S. Registration No(s). _____ on the Principal Register for the same mark for sufficiently similar goods and/or services.”  TMEP §1212.04(e). 

 

Here, the registration(s) specified in the statement must identify goods that are sufficiently similar to that of applicant’s presently identified goods.

 

(2)            Five Years’ Use:  Applicant may submit a verified statement that that portion of the mark has become distinctive of applicant’s goods and/or services through the applicant’s substantially exclusive and continuous use of the mark in commerce that the U.S. Congress may lawfully regulate for the five years before the date when the claim of distinctiveness is made.  TMEP §1212.02(f)(i); see 37 C.F.R. §2.41(a)(2).  

 

Applicant may do so by submitting the following statement, if accurate:  “The wording MILWAUKEE in the mark has become distinctive of the goods and/or services through the applicant’s substantially exclusive and continuous use of the mark in commerce that the U.S. Congress may lawfully regulate for at least the five years immediately before the date of this statement.”  TMEP §1212.05(d).

 

(3)            Other Evidence:  Applicant may submit other evidence of acquired distinctiveness of that portion of the mark, which may include “advertising expenditures, sales success, length and exclusivity of use, unsolicited media coverage, and consumer studies (linking the name to a source).”  In re Change Wind Corp., 123 USPQ2d 1453, 1467 (TTAB 2017) (quoting In re Steelbuilding.com, 415 F.3d 1293, 1300, 75 USPQ2d 1420, 1424 (Fed. Cir. 2005)).  

 

In addition to the evidence, applicant should submit the following statement, if accurate:  “The evidence shows that the wording MILWAUKEE in the mark has become distinctive of the goods and/or services.”  

 

RESPONSE GUIDELINES

 

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.  

 

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. 

 

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

 

 

 

/Jeanie H. Lee/

Examining Attorney

Law Office 105

(571) 272-6110

jeanie.lee@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 July 17, 2019 for

U.S. Trademark Application Serial No. 88308772

 

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. 

 

 

/Jeanie H. Lee/

Examining Attorney

Law Office 105

(571) 272-6110

jeanie.lee@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 July 17, 2019, 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.”