To: | Long, Samuel D. (tmdept@dpf-law.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88340745 - POND FORK PF WHISKEY CORNING & - N/A |
Sent: | 5/28/2019 5:10:57 PM |
Sent As: | ECOM113@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88340745
MARK: POND FORK PF WHISKEY CORNING &
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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: Long, Samuel D.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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EXAMINER’S AMENDMENT/PRIORITY 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: 5/28/2019
DATABASE SEARCH: The trademark examining attorney has searched the USPTO’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).
ISSUES APPLICANT MUST ADDRESS: On 5/28/2019, the trademark examining attorney and Scott Gerien discussed the issues below. Applicant must timely respond to these issues. See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §§708, 711.
MARK DIFFERS ON DRAWING AND SPECIMEN
Registration is refused because the specimen does not show the mark in the drawing in use in commerce in International Class 33, which is required in the application. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a), 1301.04(g)(i). The mark appearing on the specimen and in the drawing must match; that is, the mark in the drawing “must be a substantially exact representation of the mark” on the specimen. See 37 C.F.R. §2.51(a)-(b); TMEP §807.12(a).
In this case, the specimen displays the mark as “POND FORK PF WHISKEY CORNING & COMPANY DISTILLERS ROHNERT PARK, CALIFORNIA 750 ML 90 PROOF 45% ALCOHOL BY VOLUME” and design. However, the drawing displays the mark as “POND FORK PF WHISKEY CORNING & COMPANY DISTILLERS” and design. The mark on the specimen does not match the mark in the drawing because the added wording “ROHNERT PARK, CALIFORNIA” conveys the added commercial impression of where the goods are made, which is not present in the drawing in the mark. Applicant has thus failed to provide the required evidence of use of the mark in commerce. See TMEP §807.12(a).
Additionally, applicant is advised that it cannot amend the drawing of the mark to match the mark shown in the specimen. The USPTO will not accept an amended drawing submitted in response to this refusal because the changes would materially alter the drawing of the mark in the original application or as previously acceptably amended. See 37 C.F.R. §2.72(a)-(b); TMEP §807.14. As already mentioned, the added wording “ROHNERT PARK, CALIFORNIA” conveys the added commercial impression of where the goods are made, which is not present in the drawing in the mark. Thus, amending the drawing of the mark to include this information would constitute a material alteration, which is prohibited.
Applicant may respond to this refusal by satisfying one of the following:
(1) Submit a different specimen (a verified “substitute” specimen) for each applicable international class that (a) shows the mark in the drawing in actual use in commerce for the goods in the application, and (b) was in actual use in commerce at least as early as the filing date of the application.
Examples of specimens for goods include tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, and displays associated with the actual goods at their point of sale. See TMEP §§904.03 et seq. Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods. TMEP §904.03(i).
(2) Submit a request to amend the filing basis to intent to use under Section 1(b), for which no specimen is required. This option will later necessitate additional fee and filing requirements such as providing a specimen.
For more information about drawings and instructions on how to satisfy these response options online using the Trademark Electronic Application System (TEAS) form, see the Drawing webpage.
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.
APPLICATION HAS BEEN AMENDED: In accordance with the authorization granted by the individual identified in the Priority Action section above, the trademark examining attorney has amended the application as indicated below. Please advise the undersigned immediately of any objections. TMEP §707.
DISCLAIMER ADDED
The following disclaimer statement is added to the record:
No claim is made to the exclusive right to use “WHISKEY”, “COMPANY”, and “DISTILLERS” apart from the mark as shown.
See 15 U.S.C. §1056(a); TMEP §§1213, 1213.08(a)(i).
MARK DESCRIPTION AMENDED
The following description of the mark is added to the record:
The mark consists of a rectangle with round edges outlined in a black double line with a white interior containing a stylized “POND FORK” in red outlined in black, with a red oval with black border and white circles within it containing a white “PF” below. White flourishes with black shadowing appears on the sides of the oval, all over a number of black lines. “WHISKEY” in white with black outline over black lines appears below, and “CORNING & COMPANY DISTILLERS” in black appears at the bottom of the rectangle.
See 37 C.F.R. §2.37; TMEP §§808 et seq.
Advisory: Claim of Ownership of Prior Registration will not be Printed
/Tiffany Y. Chiang/
Trademark Examining Attorney
Law Office 113
(571) 272-7681
tiffany.chiang@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.