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: 6/11/2019

 

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).

 

The examining attorney respectfully advises applicant that this Office Action contains the following requirement(s) summarized immediately below and further explained within the body of this Office Action.

 

 

 

SUMMARY OF ISSUES that applicant must address:

 

• SOLE PROPRIETORSHIP -- applicant must clarify its sole proprietorship.

 

• COLOR CLAIM AND MARK DESCRIPTION CLARIFICATION REFUSAL -- applicant must applicant must clarify its color claim and mark description.

 

• DISCLAIMER -- the requirement to disclaim the term(s) “KAVA”, as outlined below. 

 

 

 

SOLE PROPRIETORSHIP CLARIFICATION

 

Applicant is identified in the application as a sole proprietorship named “Ace Kava Exporters”, organized in Fiji.  In addition to the applicant name and U.S. state or country of organization provided, however, applicant must also specify the name and national citizenship of the individual person who is the sole proprietor.  TMEP §803.03(a).

 

The following format for identifying a sole proprietorship should be used:  “<name of sole proprietorship>, a <identify U.S. state or country where sole proprietorship is registered to do business> sole proprietorship, composed of <name of individual>, a citizen of <country of citizenship>.”  TMEP §803.03(a).  The name of the sole proprietorship and the name of the individual can be the same. 

 

If, rather than a sole proprietorship, applicant is instead an individual person doing business under an assumed business name, then the following format should be used:  “<name of individual>, a citizen of <country of citizenship>, doing business as <assumed business name>.”  TMEP §§803.02(a), 803.04.

 

 

 

COLOR CLAIM AND MARK DESCRIPTION CLARIFICATION

 

Applicant must amend the color claim and description to identify all the colors in the drawing of the mark.  See 37 C.F.R. §2.52(b)(1); TMEP §807.07(a)-(a)(ii).  The following colors have been omitted from the color claim:  WHITE.  In addition, the following colors have been omitted from the description:  WHITE.

 

A complete color claim must reference all the colors appearing in the drawing of the mark.  See 37 C.F.R. §2.52(b)(1); TMEP §§807.07(a) et seq.  Similarly, a complete description of a mark depicted in color must specify where the colors appear in the literal and design elements of the mark.  See 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §§807.07(a) et seq.  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).

 

The following color claim and description are suggested, if accurate:

 

• IF THE COLOR WHITE IS BEING CLAIMED:

 

 

The mark consists of a brown bowl with a green pattern inside the top part of the bowl, the shape of a kava leaf designed at the center of the bowl which is partially green and brown: and the word "Kava Time" written at the bottom in brown.

 

 

Color claim:  “The colors <GREEN, BROWN, WHITE> are claimed as a feature of the mark.”

 

Description:  The mark consists of a brown bowl with a white interior partially visible and a green pattern located along and inside the top part of the white portion within the bowl, and also a design in the shape of a kava leaf appears primarily in the color white color with green and brown highlights and is located at the center of the bowl, which in turn is located above the words “KAVA TIME” written in brown color.

 

 

• IF THE COLOR WHITE IS NOT BEING CLAIMED:

 

 

The mark consists of a brown bowl with a green pattern inside the top part of the bowl, the shape of a kava leaf designed at the center of the bowl which is partially green and brown: and the word "Kava Time" written at the bottom in brown.

 

 

Color claim:  “The colors <GREEN, BROWN> are claimed as a feature of the mark.”

 

Description:  The mark consists of a brown bowl with a green pattern located along and inside the top part of the bowl, and also a design in the shape of a kava leaf with green and brown highlights appears at the center of the bowl, which in turn is located above the words “KAVA TIME” written in brown color.  The color white represents background, outlining, shading, and/or transparent areas and is not part of the mark. 

 

 

DISCLAIMER

 

Applicant must disclaim the wording “KAVA” in the mark because it merely describes an ingredient, characteristic, or feature of applicant’s goods, and thus is an unregistrable component of the mark.  See 15 U.S.C. §§1052(e)(1), 1056(a); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); TMEP §§1213, 1213.03(a). 

 

See the attached dictionary definition. 

According to the online OneLook ® Dictionary Search,

the term “KAVA” is defined as: 

 

1 : an Australasian shrubby pepper (Piper methysticum) from whose crushed root an intoxicating beverage is made 

also : the beverage made from kava

 

2 : the dried rhizome and roots of the kava used especially as a dietary supplement chiefly to relieve stress and anxiety

 

http://www.merriam-webster.com/dictionary/kava

 

 

Material obtained from the Internet is generally accepted as competent evidence in trademark examination.  See In re Jonathan Drew Inc., 97 USPQ2d 1640, 1641-42 (TTAB 2011); In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-03 (TTAB 2009); In re Leonhardt, 109 USPQ2d 2091, 2098 (TTAB 2008); TBMP §1208.03; TMEP §710.01(b).

 

 

An applicant may not claim exclusive rights to terms that others may need to use to describe their goods and/or services in the marketplace.  See Dena Corp. v. Belvedere Int’l, Inc., 950 F.2d 1555, 1560, 21 USPQ2d 1047, 1051 (Fed. Cir. 1991); In re Aug. Storck KG, 218 USPQ 823, 825 (TTAB 1983).  A disclaimer of unregistrable matter does not affect the appearance of the mark; that is, a disclaimer does not physically remove the disclaimed matter from the mark.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 978, 144 USPQ 433, 433 (C.C.P.A. 1965); TMEP §1213. 

 

If applicant does not provide the required disclaimer, the USPTO may refuse to register the entire mark.  See In re Stereotaxis Inc., 429 F.3d 1039, 1040-41, 77 USPQ2d 1087, 1088-89 (Fed. Cir. 2005); TMEP §1213.01(b).

 

Applicant should submit a disclaimer in the following standardized format:

 

No claim is made to the exclusive right to use “KAVA” apart from the mark as shown.

 

For an overview of disclaimers and instructions on how to satisfy this disclaimer requirement online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/disclaimer.jsp.

 

 

 

RESPONSE  GUIDELINES

 

Foreign Pro Se or Applicant

 

Because of the legal technicalities and strict deadlines involved in the USPTO application process, applicant may wish to hire a qualified U.S. 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 or an online directory of legal professionals, such as FindLaw®.  The USPTO, however, may not assist an applicant in the selection of a private attorney.  37 C.F.R. §2.11.

 

Please note that foreign attorneys, other than duly authorized Canadian attorneys, are not permitted to represent applicants before the USPTO.  See 37 C.F.R. §§2.17(e), 11.14(c), (e); TMEP §602.03-.03(c).  The only attorneys who may 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 other U.S. commonwealths/territories; and (2) duly authorized Canadian agents/attorneys.  See 37 C.F.R. §§2.17(e), 11.14(a), (c); TMEP §602.

 

 

U.S. Counsel Rules Changes Advisory

 

In spring 2019, the USPTO is likely to issue proposed changes to the federal trademark regulations to require trademark applicants, registrants, and parties to Trademark Trial and Appeal Board proceedings who are foreign-domiciled (have a permanent legal residence or a principal place of business outside of the United States), including Canadian filers, to have an attorney who is licensed to practice law in the United States represent them at the USPTO. In addition, U.S.-licensed attorneys representing a trademark applicant, registrant, or party will generally be required to provide their bar membership information, a statement attesting to their good standing in that bar, and their postal/email addresses in trademark-related submissions.  All U.S.-licensed attorneys who practice before the USPTO are subject to the rules in 37 C.F.R. Part 11 governing representation of others, including the USPTO’s Rules of Professional Conduct. 

 

These changes are being made to increase customer compliance with federal trademark law, improve the accuracy of trademark submissions to the USPTO, and safeguard the integrity of the U.S. trademark register.  See the U.S. Counsel Rule change webpage for more information.

 

 

If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end and the trademark will fail to register.  See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a); TMEP §§718.01, 718.02.  Additionally, the USPTO will not refund the application filing fee, which is a required processing fee.  See 37 C.F.R. §§2.6(a)(1)(i)-(iv), 2.209(a); TMEP §405.04.

 

Where the application has been abandoned for failure to respond to an Office action, applicant’s only option would be to file a timely petition to revive the application, which, if granted, would allow the application to return to active status.  See 37 C.F.R. §2.66; TMEP §1714.  There is a $100 fee for such petitions.  See 37 C.F.R. §§2.6, 2.66(b)(1).

 

 

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.  Where an applicant is represented by an attorney, 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 other federal territories and possessions of the United States; and (2) Canadian agents/attorneys who represent applicants located in Canada and (a) are registered with the USPTO and in good standing as patent agents or (b) have been granted reciprocal recognition by the USPTO.  See 37 C.F.R. §§2.17(e), 2.62(b), 11.1, 11.5(b)(2), 11.14(a), (c); TMEP §§602, 712.01.  Attorneys who fail to meet these requirements, as well as non-attorneys, are generally not permitted to represent applicants in trademark matters before the USPTO; and thus, they may not sign responses.  See 5 U.S.C. §500(b), (d); 37 C.F.R. §11.14(a)-(c), (e); TMEP §§602, 602.02, 608.01. 

 

Where an applicant is represented by an attorney, and then later retains a different attorney from a different firm, the newly retained attorney may not sign responses until applicant files a new power and/or revocation of attorney.  See 37 C.F.R. §2.18(a)(7); TMEP §604.03.

 

Where 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 et seq., 712.01.  In the case of joint applicants, all must sign.  37 C.F.R. §2.193(e)(2)(ii); TMEP §611.06(a).

 

 

Electronic Signature

 

Applicant must use one of the following methods for signing Trademark Electronic Application System (TEAS) forms:

 

(1)        Electronic typed signature.  In the TEAS signature block, the signer personally types any combination of letters, numbers, spaces, and/or punctuation marks that the signer has adopted as a signature, placed between two forward slash (/) symbols (e.g., /john doe/).  And if the filer is not the actual signer of the form, the filer may email the completed unsigned form from within TEAS to the signer to personally type his or her e-signature, after which the form will be automatically returned to the filer for submission.

 

(2)        Pen-and-ink traditional handwritten signature.  The filer prints out the completed form in text format and mails or faxes it to the signer who reviews and personally signs and dates it in the usual pen-and-ink manner.  The signature and date portion, together with the wording of a declaration under 37 C.F.R. §2.20, if required, is then scanned by the filer as a jpg or pdf image file and attached to the form for submission. 

 

See 37 C.F.R. §2.193(a); TMEP §611.01(c). 

 

In addition, the name of the signer must be clearly printed or typed near the signature.  37 C.F.R. §2.193(d); TMEP §611.01(c).  The signer’s particular title or position should also be specified.  See TMEP §804.04.

 

 

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §2.191; TMEP §§304.01-.02, 709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

 

 

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.  

 

 

 

/Ronald E. DelGizzi/

Trademark Examining Attorney

Law Office 107

Phone - (571) 272-2754

ronald.delgizzi@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 6/11/2019 FOR U.S. APPLICATION SERIAL NO. 88360119

 

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 6/11/2019, 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. 

 

/Ronald E. DelGizzi/

Trademark Examining Attorney

Law Office 107

Phone - (571) 272-2754

ronald.delgizzi@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.