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: 5/6/2019

 

 

 

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.

 

 

SUMMARY OF ISSUES PRESENTED IN THIS OFFICE ACTION:

·       Section 2(d) Refusal—Likelihood of Confusion

·       Section 1 Refusal—Ownership Refusal

·       Section 2(e)(1) Refusal—Merely Descriptive

·       Information Required Regarding Ownership Of Mark

·       Translation Statement Required

• Teas Plus Status Lost—Additional Fee Required
• Persons Who May Sign Responses—Advisory
• Domestic Pro-se Applicant—Advisory

 

 

SECTION 2(d) REFUSAL—LIKELIHOOD OF CONFUSION

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 2036306, 1702031, 2021545, 1707094, and 0648437.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

Applicant’s mark is “BOHEMIA ESPECIAL” for use with:

 

Class 32: Beer; Beer, ale and lager; Beer, ale and porter; Beer, ale, lager, stout and porter; Beer, ale, lager, stout, porter, shandy; Black beer; Bock beer; Malt beer; Pale beer; Porter; Wheat beer

 

The registered marks are as follows:

 

U.S. Registration No. 1707094 “BOHEMIA”, for use with:

 

            Class 32: beer

 

U.S. Registration No. 2021545 “BOHEMIA” and design, for use with:

 

Class 25: collateral goods used in the sale and promotion of alcoholic malt beverages, namely, T-shirts, sweat shirts, golf shirts, jackets, sweaters, pants, hats, socks, belts and aprons

 

U.S. Registration No. 2036306 “BOHEMIA”, for use with:

 

Class 25: collateral goods used in the sale and promotion of alcoholic malt beverages, namely, T-shirts, sweat shirts, golf shirts, jackets, sweaters, pants, hats, socks, belts and cloth aprons

 

U.S. Registration No. 1702031 “BOHEMIA” and design, for use with:

 

            Class 32: beer

 

U.S. Registration No. 0648437 “BOHEMIA BRAND”, for use with:

 

            Class 32: Ale

 

Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods of the parties.  See 15 U.S.C. §1052(d).  Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”).  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017).  Only those factors that are “relevant and of record” need be considered.  M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018). 

 

Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis:  (1) the similarities between the compared marks and (2) the relatedness of the compared goods.  See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.

 

In this case, the following factors are the most relevant:  similarity of the marks, similarity and nature of the goods, and similarity of the trade channels of the goods.  See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.

 

Comparison of Marks

 

Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression.  Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v).  “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.”  In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)); TMEP §1207.01(b).

 

Applicant's mark as compared to the BOHEMIA marks (Registration Nos. 1707094 and 2036306)

 

Applicant's mark is “BOHEMIA ESPECIAL” and the registrant's marks is “BOHEMIA”. Here, applicant has merely added the term “ESPECIAL” to the registrant's marks to create its own mark. Adding a term to a registered mark generally does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d).  See Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL and BENGAL LANCER and design confusingly similar); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1269 (TTAB 2009) (finding TITAN and VANTAGE TITAN confusingly similar); In re El Torito Rests., Inc., 9 USPQ2d 2002, 2004 (TTAB 1988) (finding MACHO and MACHO COMBOS confusingly similar); TMEP §1207.01(b)(iii).  In the present case, the marks are identical in part.

 

Further, note that consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark.  See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (finding similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876, 23 USPQ2d 1698, 1700 (Fed Cir. 1992) (finding similarity between CENTURY 21 and CENTURY LIFE OF AMERICA in part because “consumers must first notice th[e] identical lead word”); see also In re Detroit Athletic Co., 903 F.3d 1297, 1303, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”). Here, consumers would focus on the term “BOHEMIA” in the applicant's mark because it appears first in the mark.

 

In this case, because the registrant's marks are entirely replicated in the applicant's mark and because the first term in the applicant's mark is identical to the registrant's marks, the marks are confusingly similar.

 

As compared to the BOHEMIA and design marks (Registration Nos. 2021545 and 1702031)

 

Applicant's mark is “BOHEMIA ESPECIAL” and the registrant's marks are “BOHEMIA” and design. When evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods.  In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii).  Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed.  In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)). Thus, the word “BOHEMIA” is the dominant portion of the registrant's marks.

 

Further, note that although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression.  See In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).  Matter that is descriptive of or generic for a party’s goods is typically less significant or less dominant in relation to other wording in a mark.  See Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1824-25 (TTAB 2015) (citing In re Chatam Int’l Inc., 380 F.3d 1340, 1342-43, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004)).

 

In the present case, the attached evidence from WordReference and Oxford Dictionaries shows that the wording “ESPECIAL” in the applied-for mark is merely descriptive of applicant’s goods.  Thus, this wording is less significant in terms of affecting the mark’s commercial impression, and renders the wording “BOHEMIA” the more dominant element of the mark.

 

Here, the dominant wording in the applicant's and registrant's marks is identical, namely the wording “BOHEMIA”. Because applicant's and the registrant's marks share identical dominant wording, the marks are confusingly similar.

 

As compared to the BOHEMIA BRAND (Registration No. 0648437)

 

Applicant's mark is “BOHEMIA ESPECIAL” and the registrant's mark is “BOHEMIA BRAND” and design.  As discussed above, when evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods.  Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed. Thus, the word portion of the registrant's mark is more significant in terms of determining a likelihood of confusion.

 

Further, although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression.  See In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).  Matter that is descriptive of or generic for a party’s goods is typically less significant or less dominant in relation to other wording in a mark.  See Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1824-25 (TTAB 2015) (citing In re Chatam Int’l Inc., 380 F.3d 1340, 1342-43, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004)).

 

In the present case, the attached evidence from WordReference and Oxford Dictionaries shows that the wording “ESPECIAL” in the applied-for mark is merely descriptive of applicant’s goods.  Additionally, the wording “BRAND” in the registrant's mark is merely descriptive of or generic for the registrant's goods. Thus, this wording in the applicant's and registrant's marks is less significant in terms of affecting the marks’ commercial impressions, and renders the wording “BOHEMIA” the more dominant element of applicant's and the registrant's marks.

 

Because applicant's and the registrant's marks share identical dominant wording, the marks are confusingly similar.

 

Comparison of Goods

 

The goods are compared to determine whether they are similar, commercially related, or travel in the same trade channels.  See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).

 

Applicant's goods as compared to goods under the BOHEMIA (1707094) and BOHEMIA (1702031) marks

 

When analyzing an applicant’s and registrant’s goods for similarity and relatedness, that determination is based on the description of the goods in the application and registration at issue, not on extrinsic evidence of actual use.  See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)). 

 

In this case, the goods in the application and registration(s) are identical. Specifically, both applicant and the registrant claim beer. Therefore, it is presumed that the channels of trade and class(es) of purchasers are the same for these goods.  See Cai v. Diamond Hong, Inc., __ F.3d __, 27 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)).  Thus, applicant’s and registrant’s goods are related.  

 

Applicant's goods as compared to goods under the BOHEMIA BRAND mark (0648437)

 

When analyzing an applicant’s and registrant’s goods for similarity and relatedness, that determination is based on the description of the goods in the application and registration at issue, not on extrinsic evidence of actual use.  See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)). 

 

In this case, the goods in the application and registration(s) are identical. Specifically, both applicant and the registrant claim ale. Therefore, it is presumed that the channels of trade and class(es) of purchasers are the same for these goods.  See Cai v. Diamond Hong, Inc., __ F.3d __, 27 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)).  Thus, applicant’s and registrant’s goods are related.  

 

Applicant's goods as compared to goods under the BOHEMIA marks (Registration Nos. 2021545 and 2036306)

 

The compared goods need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i).  They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).

 

Applicant's goods are beer, and the registrant's goods are collateral goods used in the sale and promotion of alcoholic malt beverages, namely, T-shirts, sweat shirts, golf shirts, jackets, sweaters, pants, hats, socks, belts and aprons. Applicant's and the registrant's goods are related because the goods of the respective parties are of a type that are commonly provided by a single source under the same mark. See attached evidence from Round Barn, Bent Brewstillery, and Dogfish Head Brewery showing beer and goods such as T-shirts, sweat shirts, golf shirts, jackets, sweaters, pants, hats, socks, belts and aprons used in the sale and promotion of alcoholic malt beverages provided by a single source under the same mark. Therefore, consumers familiar with the registrant's goods will also expect applicant's goods to be provided by the registrant.

 

Conclusion

 

The relatedness of the goods here, coupled with the similar marks at issue, requires registration of the applied-for mark to be refused under Section 2(d) of the Trademark Act.

 

Applicant should note the following additional ground for refusal.

 

 

SECTION 1 REFUSAL—OWNERSHIP REFUSAL

 

Registration is refused 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.  Trademark Act Section 1, 15 U.S.C. §1051; see 37 C.F.R. §2.71(d); TMEP §1201.02(b).  The application identifies the owner of the mark as “HC Foods Co., Ltd.”; however, the attached evidence from Wikipedia and RateBeer shows that the owner of the mark appears to be “Cerveceria Nacional Dominicana (AB-InBev)” located in Santo Domingo, Dominican Republic. 

 

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.

 

Applicant should note the following additional ground for refusal.

 

 

SECTION 2(e)(1) REFUSAL—MERELY DESCRIPTIVE

 

Registration is refused because the applied-for mark merely describes a characteristic of applicant’s goods.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.

 

A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s goods.  TMEP §1209.01(b); see, e.g., In re TriVita, Inc., 783 F.3d 872, 874, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005) (citing Estate of P.D. Beckwith, Inc. v. Comm’r of Patents, 252 U.S. 538, 543 (1920)). 

 

Applicant's mark is comprised of the terms “BOHEMIA” and “ESPECIAL”. The attached evidence from WordReference shows the term “Bohemia” means “bohemian” in English. The attached evidence from Craft Beer & Brewing shows that “bohemian” refers to “a beer style that retains closer links to the origins of the ‘pilsner family’ of lager beer styles than any other type.” Further, the attached evidence from WordReference shows that the term “especial” means “special” in English, and the attached evidence from Oxford Dictionaries further defines this term as meaning “better, greater, or otherwise different from what is usual.” Therefore, the applied-for mark merely describes applicant's goods are being bohemian-style beers that are better than other beers.

 

Because the applied-for mark is merely descriptive of applicant's goods, it must be refused under Section 2(e)(1) of the Trademark Act.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.  However, if applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.

 

 

INFORMATION REQUIRED REGARDING OWNERSHIP OF MARK

 

Applicant must establish for the record its ownership of the mark sought to be registered and right to apply in the United States because the record indicates that applicant merely distributes or imports the goods for the owner of the mark.  If applicant merely distributes or imports goods for the owner of the mark, then applicant must do one of the following:

 

(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.

 

 

TRANSLATION STATEMENT REQUIRED

 

To permit proper examination of the application, applicant must submit an English translation of all wording in the mark that appears to be foreign.  37 C.F.R. §§2.32(a)(9), 2.61(b); TMEP §809.  The following English translation is suggested:  The English translation of “BOHEMIA ESPECIAL” is “Bohemian Special”.  TMEP §809.03.  See attached translation evidence.

 

 

TEAS PLUS STATUS LOST—ADDITIONAL FEE REQUIRED

 

Applicant must submit an additional processing fee of $125 per class because the application as filed did not meet the TEAS Plus application filing requirements.  See 37 C.F.R. §§2.6(a)(1)(v), 2.22(a), (c); TMEP §§819.01 et seq., 819.04.  Specifically, applicant failed to meet the following application filing requirement(s):  translation of foreign wording in mark. 

 

The additional fee is required even if applicant later corrects these application requirements.

 

 

Applicant should additionally note the advisory below.

 

 

PERSONS WHO MAY SIGN RESPONSES—ADVISORY

 

Responses to Office actions must be properly signed.  See 37 C.F.R. §§2.62(b), 2.193(e)(2); TMEP §§712, 712.01.  If an applicant is not represented by an attorney, the response must be signed by the individual applicant or someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner).  See 37 C.F.R. §2.193(e)(2)(ii); TMEP §§611.03(b), 611.06(b)-(h), 712.01.  In the case of joint applicants, all must sign.  37 C.F.R. §2.193(e)(2)(ii); TMEP §611.06(a). 

 

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

 

Because of the legal technicalities and strict deadlines involved in the USPTO application process, applicant may wish to hire a private 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; 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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 5/6/2019 FOR U.S. APPLICATION SERIAL NO. 88311237

 

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 5/6/2019, 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. 

 

/Justine N. Burke/

Justine N. Burke

Trademark Examining Attorney

Law Office 121

571-270-1631

Justine.Burke@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.