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: 5/31/2019

 

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 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:

 

• Disclaimer is Required
• Color Claim and Description of the Mark Require Clarification and Amendment
• Request for Information

 

Disclaimer is Required

 

Applicant must provide a disclaimer of the unregistrable parts 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).

In this case, applicant must disclaim all the wording in the mark because it is not inherently distinctive.  These unregistrable terms at best are merely descriptive of a characteristic or feature of applicant’s goods (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)), primarily geographically descriptive of the origin of applicant’s goods (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)), or are merely informational (see 15 U.S.C. §§1051-1053, 1127; In re Boston Beer Co., 198 F.3d 1370, 1372-74, 53 USPQ2d 1056, 1058-59 (Fed. Cir. 1999); In re Aerospace Optics, Inc., 78 USPQ2d 1861, 1864 (TTAB 2006); TMEP §§807.14(a), 1202.04, 1213.03(a), (b)).

The attached definitions from the Merriam-Webster Dictionary show that PINO GRIGIO refers to “a dry white wine that is produced in Italy” and that ITALY is a known geographic location.  The attached article from http://www.winespectator.com/articles/does-the-vintage-year-on-a-wine-bottle-indicate-the-year-the-grapes-were-harvested-or-the-year-the-wine-was-released-50648, shows that the date on a wine bottle informs consumers of the harvest date of the grapes used to make the wine.  Thus, the wording PINOT GRIGIO 2017 PRODUCT OF ITALY merely describes for consumers that applicant’s goods include Pinot Grigio produced in Italy from grapes harvested in 2017.  Further, the additional attached definition from the Merriam-Webster Dictionary shows that in the context of applicant’s goods, FINE refers to wine that is “superior in kind, quality, or appearance : EXCELLENT…fine wines”.  See also, http://www.wsjwine.com/jsp/aboutwine/common/helpfulhintstemplate.jsp?hintId=100008&hhtitle=Fine%20Wines, and http://www.winespectator.com/articles/not-a-sure-thing-52874 (attached).  Applicant’s identification includes the word WINE, and as is well-known, ITALIAN refers to something “of, relating to, or characteristic of Italy.” See http://www.merriam-webster.com/dictionary/Italian (attached).   Thus, the wording FINE describes a feature of applicant’s goods, namely, they include superior/top quality wine, and the wording “ITALIAN WINE” merely describes for consumers that applicant’s goods include fine Italian wine.

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

 

No claim is made to the exclusive right to use “PINOT GRIGIO”, “2017”, “PRODUCT OF ITALY”, “FINE” and “ITALIAN WINE” 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. 

 

Applicant must respond to the additional requirements set forth below.

 

Color claim and description of the mark require Clarification and amendment

 

Applicant must clarify the colors that are being claimed as a feature of the mark.  See 37 C.F.R. §§2.37, 2.52(b)(1), 2.61(b); TMEP §§807.07(a) et seq.  The drawing shows the mark in the colors light brown, white, black, light gray and light green; however, the following colors appear in the color claim: grey, light red, light brown and the following colors appear in the description of the mark: white, light gray, light red, black.  

 

Where the color claim and/or description of the mark and drawing are inconsistent with one another, generally the USPTO looks to the drawing to determine what the mark is.  TMEP §807.07(a)(i)-(a)(ii), (c).  Additionally, the colors in the drawing, color claim, and description must match.  See 37 C.F.R. §2.52(b)(1); TMEP §§807.07 et seq. 

 

To clarify the colors in the mark, applicant may satisfy one of the following:

 

(1)            Submit a new color drawing that shows the mark in the colors specified in the color claim and/or description.  TMEP §807.07(c), However, any other amendments to the drawing will not be accepted if they would materially alter the mark.  37 C.F.R. §2.72; see TMEP §§807.07(c), 807.14 et seq.

 

            Applicant is advised that to the extent the corkscrew is intended to be formed by cut-out space leaving a transparent area that will show the underlying wine bottle, the corkscrew must appear in grey, white or black and applicant must indicate that the gray, white or black used to form the corkscrew is “background, outlining, shading, and/or transparent areas and is not part of the mark”.  For example, to the extent applicant were to submit an amended drawing with the only change being the corkscrew shown in gray, the following would be an acceptable amended description and color claim:

 

·       Description of the Mark: The mark consists of a white rectangle outlined in light brown with light gray horizontal lines creating the illusion of ridges.  At the top of the rectangle is the silhouette of a corkscrew.  At the bottom right of the corkscrew is a bunch of grapes with leaves all in light green, surrounded by the words "FINE ITALIAN WINE", with a shaded circle on either side of “FINE”, all in light green.  The wording "PINOT GRIGIO", "2017", and "PRODUCT OF ITALY" are at the bottom of the rectangle all in black font, with a horizontal line on either side of “2017” in light green.  The gray shown in the corkscrew represents transparent area and is not part of the mark.

·       Color Claim: The colors white, light grey, light brown, light green and black are claimed as a feature of the mark.

 

            Applicant is further advised that if a new drawing is submitted and otherwise changes the colors, for example, to depict the grapes and surrounding wording in red rather than light green, applicant must amend the color claim and description of the mark to match the colors in the amended drawing accordingly. 

 

(2)       Alternatively, applicant may submit an amended color claim and description that matches the colors in the current drawing.  Generic color names must be used to describe the colors in the mark, e.g., red, yellow, blue.  TMEP §807.07(a)(i)-(ii).  If black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark, applicant must so specify in the description.  See TMEP §807.07(d).  Based on the current drawing of record, the following amended color claim and description are suggested:

 

Description:  The mark consists of a white rectangle outlined in light brown with light gray horizontal lines creating the illusion of ridges.  At the top of the rectangle is the silhouette of a corkscrew in light brown. At the bottom right of the corkscrew is a bunch of grapes with leaves all in light green, surrounded by the words "FINE ITALIAN WINE" with a shaded circle on either side of “FINE”, all in light green.  The wording "PINOT GRIGIO", "2017", and "PRODUCT OF ITALY" are at the bottom of the rectangle all in black font, with a horizontal line on either side of “2017” in light green.

 

Color claim:  The colors white, light grey, light brown, light green and black are claimed as a feature of the mark.

 

For more information about drawings and instructions on how to submit a new color drawing, amended color claim and/or description online using the Trademark Electronic Application System (TEAS) form, see the Drawing webpage.

 

Applicant must respond to the additional requirement set forth below.

 

Request for Information

Applicant must provide a written statement explaining whether the goods will be manufactured, packaged, shipped from, made with grapes from, or will have any other connection with the geographic location named in the mark.  See 37 C.F.R. §2.61(b); TMEP §§814, 1210.03.  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. 

Responding to the Office Action

 

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. 

 

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.  

 

 

 

Ashley D. Hayes

/Ashley D. Hayes/

Examining Attorney

Law Office  108

(571) 272-2826

ashley.hayes@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 5/31/2019 FOR U.S. APPLICATION SERIAL NO. 88340263

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click 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)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 5/31/2019 (or sooner if specified in the Office action).  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.  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

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.  Instead, the USPTO recommends that you respond online using the TEAS response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@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.