Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

FINAL 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) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

 

Issue date:  November 11, 2019

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on October 23, 2019.

 

In a previous Office action dated May 2, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following:  Trademark Act Section 2(e)(4) primarily merely a surname refusal, failure to show the applied-for mark in use in commerce with any of the specified services.  In addition, applicant was required to satisfy the following requirements:  translation of foreign wording, loss of TEAS Plus status - $125 fee required.

 

Based on applicant’s response, the trademark examining attorney notes that the following refusals have been obviated:  Section 2(e)(4) primarily merely a surname refusal, specimen refusal.  See TMEP §§713.02, 714.04. 

 

Further, the trademark examining attorney maintains and now makes FINAL the requirements in the summary of issues below.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

All arguments and evidence included in the May 2, 2019 Office action are incorporated herein by reference.

 

SUMMARY OF ISSUES MADE FINAL that applicant must address:

• Translation Requirement – Final 
• Loss of TEAS Plus Status - $125 Fee Required – Final

 

TRANSLATION OF FOREIGN WORDING – FINAL

 

To permit proper examination of the application, applicant must submit an English translation of the foreign wording in the mark “ITALIA.”  37 C.F.R. §§2.32(a)(9), 2.61(b); see TMEP §809.  The following English translation is suggested:  The English translation of “ITALIA” in the mark is “ITALY”.  TMEP §809.03.  See previously attached translation evidence.

 

Per applicant’s response communication dated October 23, 2019, applicant argues that “no translation is necessary” in the instant case because the wording “Italia is particularly well known by Americans in connection with food  and restaurants.” Applicant further argues that “no translation of the Italia was required in the prior registration 5621759 [and others].” Such arguments are unpersuasive.

 

Firstly, prior decisions and actions of other trademark examining attorneys in registering other marks have little evidentiary value and are not binding upon the USPTO or the Trademark Trial and Appeal Board.  TMEP §1207.01(d)(vi); see In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d 1790, 1793 n.10 (TTAB 2017).  Each case is decided on its own facts, and each mark stands on its own merits.  In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d at 1793 n.10 (quoting In re Boulevard Entm’t, 334 F.3d 1336, 1343, 67 USPQ2d 1475, 1480 (Fed. Cir. 2003)).

 

Further, arguendo, the examining attorney has attached Reg. Nos. 5877160, 5888283, 5825490, 5771776, 5783873, 5709668, and 5752606, wherein the non-English wording “ITALIA” has been translated. See attached third-party registrations, namely, translation statements of record. The examining attorney has also attached dictionary evidence from Merriam-Webster, The American Heritage Dictionary, and Macmillan Dictionary, establishing that the wording “ITALIA” is not an English term listed in English dictionaries. 

 

Given the foregoing, applicant must submit an English translation of the foreign wording “ITALIA” in the mark.

 

LOSS OF TEAS PLUS STATUS - $125 FEE REQUIRED – FINAL

 

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:  translation of foreign wording. 

 

The additional fee is required even if applicant later corrects this application requirement

 

ASSISTANCE

 

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 final Office action and/or appeal it to the Trademark Trial and Appeal Board (TTAB)

 

 

/Amanda Galbo/

Amanda Galbo

Trademark Examining Attorney

Law Office 125

(571) 272-5391

amanda.galbo@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 November 11, 2019 for

U.S. Trademark Application Serial No. 88340899

 

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. 

 

 

/Amanda Galbo/

Amanda Galbo

Trademark Examining Attorney

Law Office 125

(571) 272-5391

amanda.galbo@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 November 11, 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.”