To: | HC Foods Co., Ltd. (tim@hcfoods.net) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88311126 - TINIMA - N/A |
Sent: | 5/4/2019 9:24:22 PM |
Sent As: | ECOM121@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88311126
MARK: TINIMA
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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: HC Foods Co., Ltd.
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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: 5/4/2019
INTRODUCTION
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SEARCH RESULTS FROM USPTO DATABASE FOR CONFLICTING 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:
· Persons Who May Sign Responses—Advisory
· Domestic Pro se Applicant—Advisory
SECTION 1 REFUSAL—OWNERSHIP REFUSAL
The attached evidence from applicant's own website makes clear that applicant is “a local distributor… [that] has developed into one of the largest Asian foodstuff Importer/Distributor in California.” Note that a distributor, importer, or other distributing agent of the goods of a manufacturer or producer does not acquire a right of ownership in the manufacturer’s or producer’s mark merely because it moves the goods in trade. See In re Bee Pollen from Eng. Ltd., 219 USPQ 163 (TTAB 1983); Audioson Vertriebs - GmbH v. Kirksaeter Audiosonics, Inc., 196 USPQ 453 (TTAB 1977); Jean D’Albret v. Henkel-Khasana G.m.b.H., 185 USPQ 317 (TTAB 1975); In re Lettmann,183 USPQ 369 (TTAB 1974); Bakker v. Steel Nurse of America Inc., 176 USPQ 447 (TTAB 1972). A party that merely distributes goods bearing the mark of a manufacturer or producer is neither the owner nor a related-company user of the mark. See TMEP §1201.06(a).
An application must be filed by the party who owns or is entitled to use the mark as of the application filing date; otherwise, the application is void. 37 C.F.R. §2.71(d); see 15 U.S.C. §1051; Lyons v. Am. Coll. of Veterinary Sports Med. & Rehab., 859 F.3d 1023, 1027, 123 USPQ2d 1024, 1027 (Fed. Cir. 2017) (citing Aycock Eng’g, Inc. v. Airflite, Inc., 560 F.3d 1350, 1357, 90 USPQ2d 1301, 1305 (Fed. Cir. 2009); Holiday Inn v. Holiday Inns, Inc., 534 F.2d 312, 319 n.6, 189 USPQ 630, 635 n.6 (C.C.P.A. 1976)). TMEP §§1201, 1201.02(b).
Applications filed in the name of the wrong party cannot be cured by amendment or assignment. See 37 C.F.R. §2.71(d); TMEP §803.06. Instead, the owner must file a new application.
Because applicant does not appear to have been the owner of the mark or entitled to use the mark as of the filing date of the application, the applied-for mark must be refused under Trademark Act Section 1.
INFORMATION REQUIRED REGARDING OWNERSHIP OF MARK
(1) Provide a statement that a parent and wholly owned subsidiary relationship exists between the distributor and manufacturer.
(2) Provide one of the following documents if applicant is a United States distributor, importer, or other distributing agent for a foreign manufacturer or producer:
(a) A copy of an assignment from the foreign owner to applicant of all rights in the mark in the United States together with the business and goodwill appurtenant thereto
(b) A written consent from the foreign owner to applicant’s registration of the mark in the United States
(c) A written agreement or acknowledgment between the parties that applicant owns the mark in the United States
TMEP §1201.06(a); see 37 C.F.R. §2.61(b); In re Pharmacia Inc., 2 USPQ2d 1883, 1883-84 (TTAB 1987); In re Geo. J. Ball, Inc., 153 USPQ 426, 427-28 (TTAB 1967); TMEP §1201.04.
Pending an adequate response to the above, registration is refused because applicant does not own the mark for which registration is sought. Trademark Act Section 1, 15 U.S.C. §1051; see TMEP §§1201, 1201.06(a).
Applicant must additionally respond to the requirement below.
INFORMATION REQUIRED REGARDING SIGNIFICANCE OF MARK
To permit proper examination of the application, applicant must provide the following information:
(1) Explain whether the wording in the mark “TINIMA” has any meaning or significance in the industry in which the goods and/or services are manufactured/provided, any meaning or significance as applied to applicant’s goods and/or services, or if such wording is a term of art within applicant’s industry.
(2) Explain whether this wording identifies a geographic place or has any meaning in a foreign language.
(3) Submit an English translation of all foreign wording in a mark and a transliteration (the phonetic spelling of the pronunciation, in Latin characters) of all non-Latin characters in a mark. If the wording does not have meaning in a foreign language, applicant should so specify.
The format for an English translation and transliteration: “The English translation of “TINIMA” is “{indicate English translation}”.”
The format for when there is no English translation or meaning of the transliteration: “The wording “TINIMA” has no meaning in a foreign language.”
See 37 C.F.R. §§2.32(a)(9)-(a)(10), 2.61(b); TMEP §§809-809.03, 814.
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.
Applicant should additionally note the advisory below.
PERSONS WHO MAY SIGN RESPONSES—ADVISORY
If an applicant is represented by an attorney authorized to practice before the USPTO, the attorney must sign the response. 37 C.F.R. §2.193(e)(2)(i); TMEP §§611.03(b), 712.01. The only attorneys who may sign responses and otherwise 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 U.S. commonwealths/territories; and (2) certain Canadian agents and/or attorneys. See 37 C.F.R. §§2.17(e), 11.14(a), (c); TMEP §602. If an applicant changes attorneys, the newly retained attorney may not sign responses until the applicant files a new power and/or revocation of attorney. See 37 C.F.R. §2.18(a)(7); TMEP §604.03.
NOTE: For entities set forth as CORPORATIONS, a corporate officer must sign. An officer is a person who holds an office established in the articles of incorporation or corporate bylaws. The usual titles for officers are President, Vice-President, Secretary, Treasurer, Chief Executive Officer, Chief Operating Officer, and Chief Financial Officer. In some organizations, the Treasurer is called a Comptroller or Controller, and these terms are acceptable. In Maine and Massachusetts the term "Clerk" identifies an officer of a corporation. See TMEP §611.06(d).
Applicant should additionally note the advisory below.
DOMESTIC PRO SE APPLICANT—ADVISORY
For attorney referral information, applicant may consult the American Bar Association’s Consumers’ Guide to Legal Help; an online directory of legal professionals, such as FindLaw®; or a local telephone directory. The USPTO, however, may not assist an applicant in the selection of a private attorney. 37 C.F.R. §2.11.
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.
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.
/Justine N. Burke/
Justine N. Burke
Trademark Examining Attorney
Law Office 121
571-270-1631
Justine.Burke@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.